Back to United States

Trademarks: non-contentious (including prosecution, portfolio management and licensing) in United States

Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Highly regarded by clients and peers alike, Finnegan, Henderson, Farabow, Garrett & Dunner LLP is active in all areas of trademark law, with a standout record in trademark clearance and portfolio management;  infringement litigation and enforcement; and licensing deals and IP-driven corporate transactions. Clients are often operating in industries such as biotech and pharmaceuticals, consumer products, software, and sports. Practice leader Danny Awdeh in Washington DC is a key contact in the group, and is also a leading figure in the market. He is experienced in complex litigation, high-value transactions and strategic counseling. Douglas Rettew is recommended for right-of-publicity matters and trademark prosecution and licensing; Mark Sommers focuses on brand protection, unfair competition, and cybersquatting; and Naresh Kilaru has expertise in domestic and international trademark prosecution, as well as in other issues relating to global brand protection. Also recommended is Boston-based counsel Laura Johnson.

Practice head(s):

Danny Awedeh

Other key lawyers:

Mark Sommer; Naresh Kilaru; Douglas Rettew; Laura Johnson

Testimonials

‘The team is well-structured and organized. Our company’s works are assigned to appropriate persons. Attorneys at higher levels handle works of some complexity. So as a client, we can get timely update on our marks (we truly appreciate it) and the attorneys we entrust can focus their attention to advising and developing strategy.’

Fross Zelnick Lehrman & Zissu, P.C.

Fross Zelnick Lehrman & Zissu, P.C. handles all things trademarks for some of the world's most valuable brands and for holders of the best-known marks. It acts for clients operating in the areas of pharmaceuticals, fashion, cosmetics and entertainment sectors, and also has experience advising on brand expansion for start-ups. A key figure in the team is Barbara Solomon, who focuses on designing strategies to avoid trademark litigation, but is also an experienced IP litigation lawyer. Contacts for international trademark management include Nadine Jacobson and Lydia Goben, who have experience of the retail, apparel, luxury, and finance sectors. Leo Kittay is a contact for growth-companies, and Allison Strickland Ricketts is also recommended for trademark registration, enforcement, protection, and clearance. Lawyers work across the firm's New York and Washington DC offices.

Other key lawyers:

Barbara Solomon; Nadine Jacobson; Lydia Gobena; Leo Kittay; Allison Strickland Ricketts

Key clients

TED Conferences

Johnson & Johnson

Gap/Banana Republic/Old Navy

Tiffany & Company

Mondelēz

Peloton Interactive

Warner Bros. Entertainment Group

The LEGO Group

Colgate-Palmolive Company

Richemont (Cartier, Van Cleef & Arpels, Piaget, & others)

Work highlights

  • Filed a federal lawsuit and used investigators to successfully address the misuse of Mondelēz Canada Inc.’s mark and packaging with packaging used for cannabis products.
  • Acted on behalf of Robert Kirkman, LLC, owner of THE WALKING DEAD trademark associated with the comic book and television series in Trademark Trial and Appeal Board an application to register the mark THE TOKING DEAD that covered retail merchandise related to comic books about zombies that smoke cannabis.
  • Represented Overtime Sports in a matter against Dick’s Sporting Goods, concerning the use of the name “Overtime by Dick’s Sporting Goods” for deep-discount retail stores.

Kelly IP LLP

Washington DC-based IP boutique Kelly IP LLP has a very strong reputation for trademark clearance, portfolio management, licensing, and enforcement, as well as litigation before federal courts and the Trademark Trial and Appeal Board. The team advises Fortune 500 companies, start-ups, and non-profits in the areas of software, retail, publishing, entertainment and consumer products, among others. Under the leadership of name partner David Kelly, an expert in trademark enforcement and prosecution, the firm has attracted a number of new high-profile clients such as American Eagle and Capital One. Stephanie Bald is recommended for trademark disputes and counseling, and Robert Litowitz has been singled out as a 'master litigator'. Linda McLeod frequently leads cases before the Trademark Trial and Appeal Board, and 'complete starLynn Jordan has expertise in matters relating to titles in film, television, books, and video games.

Practice head(s):

David Kelly

Other key lawyers:

Stephanie Bald; Robert Litowitz; Linda McLeod; Lynn Jordan

Testimonials

‘Kelly IP provides in house counsel with a wealth of practical IP experience. They approach IP issues strategically and offer creative solutions.’

‘The attorneys are all recognized experts in the trademark field and provide creative, practical, responsive and cost-effective advice. Stephanie Bald is a specific stand-out with her passionate advocacy for her clients.’

‘David Kelly and his team are able to ably their professional knowledge to a client’s particular needs creatively and cost-effectively.’

‘David Kelly sets the benchmark for excellence in expertise and service.’

Stephanie Bald and Rob Litowitz stand out for their creativity and pragmatism.

‘We love Kelly IP. We have worked with them since the firm was established and, though we’re possibly a small client in their terms, we always feel our work is their priority. What makes them special is that we feel that they are an extension of our inhouse team; they care about our company, and are committed to getting great outcomes for us.’

‘Lynn Jordan is a complete star. Her advice is clear, concise, commercial, and always delivered ahead of schedule.’

‘They are very detailed and thorough in their work. They come up with practical solutions. Very responsive.’

‘They adapt to the needs and procedures of clients and provide great expertise at reasonable cost. Especially strong in making quick, accurate, and effective litigation and challenge strategies.’

‘Their expertise and ability and willingness to provide opinions and insight without having to present long analyses — although these can be obtained if desired. We value their business (“how to” not “can’t do”) approach to both contentious matters and prosecution.’

‘Kelly IP truly thinks outside of the box and seeks to provide solutions rather than just finished work product. Dave Kelly does a fantastic job in working to understand the needs and then delivering finished work product in the first instance. I can usually pass it directly on to my stakeholders. They are a truly fantastic team of professionals who are appropriately aggressive while providing sound counsel. They feel like an extension of my legal department.’

‘Dave Kelly is a brilliant attorney. I value his judgment, thoughtful, and strategic direction. When Dave provides an opinion, you know it’s thought out and sound. I feel very confident in whatever he tells me. This is a unique feeling that not every attorney can provide.’

Rob Litowitz is a master litigator. He’s tenacious and thoughtful while always remaining calm.’

‘Amazing big law backgrounds from top big IP firms, but at lower rates and more efficient and streamlined. They are a fun team to work with and they enjoy working together. Brilliant strategists and give realistic business-oriented advice.’

We interviewed and spoke with large number of excellent trademark counsel and made the right choice in selecting Stephanie Bald and Kelly IP.’

Key clients

Disney

Marvel

LucasFilm

Pixar

ABC TV

Harley-Davidson

BMW

Rolls-Royce

MINI

Caterpillar

Expedia

Autodesk

FIS

AstraZeneca

BIC

American Eagle

Capital One

Shake Shack

Travelers

British Broadcasting Corporation

Vanguard

Dow Jones

Verizon

Yahoo

Aston Martin

U.S. News and World Report

Netflix

This Old House

Lamaze

Optical Society of America

Thumbtack

Toshiba

Host Hotels

Fox Blackboard

Luke’s Lobster

ETW (Tiger Woods)

Oneida Indian Nation

Intel Corporation

American University

News UK

NJOY

World WildLife Foundation

Bugatchi Uomo Apparel, Inc.

Dassault Falcon Jet Corp.

Pax Labs, Inc.

LUS Brands

Educational Advisory Board

Money Media

Kilpatrick Townsend & Stockton

Kilpatrick Townsend & Stockton advises on matters ranging from trademark applications and registrations to disputes, acting for a slate of top-tier clients in industries such as consumer products, food and drink, technology, retail, and traditional media. In Atlanta, practice co-leader William Brewster is recommended for false advertising, unfair competition and trademark litigation, and has deep experience of jury and bench trials as well as appeals. He works alongside Alicia Jones, who focuses on trademark prosecution, portfolio strategy, and enforcement. Practice co-head Anthony Malutta in San Fransisco is an expert in trademark acquisitions and enforcement, while David Mayberry in New York specializes in trademark litigation. Also recommended is Marc Lieberstein, an expert in IP licensing and franchising.

Practice head(s):

Bill Brewster; Anthony Malutta; David Mayberry

Other key lawyers:

Alicia Jones; Marc Lieberstein

Key clients

Levi Strauss & Co.

S’well Bottle Company

Momofuku / Fuku

CREE

Reynolds American

Arent Fox LLP

Arent Fox LLP has a strong focus on trademark advisory and counseling work, helping its client roster of television and movie studios, fashion brands and food and beverage companies with building and maintaining trademark portfolios. Based in Washington DC, trademark practice leader Ricardo Fischer counsels US companies seeking to enter international markets, as well as international brands from Latin America and Europe seeking entry into the US market. Also recommended in Washington DC are Anthony Lupo, a contact for clients in the entertainment, fashion, and technology sectors; Christina Carvalho, who handles cross-border IP transactions and it admitted to practice in the US and Brazil; and counsel Michael Grow, who has experience of transactional matters as well as IP litigation.

Practice head(s):

Ricardo Fischer; Anthony Lupo; Cristina Carvalho

Other key lawyers:

Michael Grow

Testimonials

‘Our main contact is Ricardo Fischer whose experience as a lawyer in Latin America and the United States and fluency in Spanish is a great plus for our company since the US legal system is usually difficult to understand for European companies who are used to a completely different legal and judicial system. Ricardo, apart from his full availability, has in a very short time acquired a good knowledge of our company which is extremely important for us. Ricardo has a vast knowledge of IP matters and he understands our concerns and needs to almost perfection. Overall, our experience with all the team is very satisfactory.’

‘Our aim as a business is to resolve issues and not necessarily to enter litigation. Arent Fox has been instrumental in achieving this objective during the last two years. They are very good negotiators and aim at understanding the business objective behind the legal issue.

Very flexible and capable of establishing a true partnership.’

Ricardo Fischer supports us on all policy and strategic issues, he is always available and looks for out of the box angles to tackle an issue.’

‘Arent Fox has a very strong and balanced team. The partners are very present and have are very hands-on. Response time is optimum.’

‘Ricardo Fischer is top. He has a very practical approach to solving issues and generates automatic trust.’

Key clients

Discovery Inc.

Rothy’s, Inc.

Qualcomm Incorporated

The Saul Zaentz Company

Ron Santa Teresa

Restaurant Brands International (Burger King and Tim Hortons)

Ferrari S.p.A.

Tesla

Work highlights

  • Advised on the IP aspects of a number of new ventures, including the launch of the DISCOVERY AT SEA partnership with Princess Cruise lines, the expansion of the Discovery Destinations Hotels & Resorts vacation properties, and the Discovery Adventures Moganshan Park in China.
  • Managed all facets of the global brand clearance and protection throughout Qualcomm’s 170-country network.
  • Managed the extensive worldwide trademark portfolio for Tesla, including brand clearance, protection, publicity rights, and enforcement matters.

Baker McKenzie LLP

A 'truly global' IP team, Baker McKenzie LLP's US segment is spread across offices in New York, Palo Alto, Dallas, Washington DC, and Chicago, and is highly experienced in the protection and enforcement of trademark rights. Leveraging the strength of its international network, the teams also handles international and cross-border trademark filings, clearance and enforcement. Clients are primarily global brands operating in the healthcare, food, fashion, luxury, retail, and media and entertainment sectors. In New York, IP and technology chair Pamela Church is a trademark and copyright specialist, and leads on major IP-driven transactions. Also recommended is transactions specialist Marcela Robledo, who joined from Simpson Thacher & Bartlett LLP in May 2020.

Practice head(s):

Pamela Church

Other key lawyers:

Marcela Robledo

Testimonials

‘Truly global practice, very well rounded.’

Key clients

PointsBet Holdings

North Equity

Ingersoll-Rand

Nielsen

Unilever

HSBC

Brooks Brothers

Swarovski

Dolce & Gabbana

C.S. Lewis Company

Daily Mail and General Trust

Regent

Work highlights

  • Advised PointsBet Holdings on the IP aspects of its five-year US media partnership with NBCUniversal Media involving media buys across certain areas of NBCUniversal’s digital and linear media platforms and certain exclusive rights to promote its services as Official Sports Betting Partner of NBC Sports through agreed pre-game, post-game and in-game promotional enhancements and integrations.
  • Represented North Equity, a leading digital media venture firm, in its acquisition from Bonnier Corporation of seven of its best-known American titles, including Saveur, Popular Science, Popular Photography, Outdoor Life and Field & Stream.
  • Drafted and reviewed relevant agreements relating to, and advised Ingersoll-Rand on the assignment of, approximately 2000 trademarks in over 100 countries.

Cowan, Liebowitz & Latman, PC

The New York-based trademark prosecution team at Cowan, Liebowitz & Latman, PC provides solid nationwide coverage and has also built relationships with domestic counsel in other jurisdictions to provide comprehensive advice on international trademark prosecution. Advising on a full range of trademark and domain name matters, practice leader and 'top-notch trademark lawyerDeborah Squiers is recommended for enforcement, counseling, and prosecution, both in the US and internationally. She works alongside counsel Lynn Fruchter, who focuses on trademark licensing in the entertainment, financial services, and cosmetic sectors. Joel Karni Schmidt is singled out as an 'outstanding strategist', and a key resource for clients in the hospitality sector; Mary Kevlin manages the trademark portfolios of major brands such as Major League Baseball; Kieran Doyle litigates for clients in the publishing, medical marijuana, and fashion industries; and William Borchard has experience of trademark clearance, registration, and infringement claims. Also recommended in this space are Meichelle MacGregor and Mary Donovan.

Practice head(s):

Deborah Squiers

Other key lawyers:

Joel Karni Schmidt; Mary Kevlin; Lynn Fruchter; Meichelle MacGregor; Mary Donovan; Kieran Doyle; William Borchard

Testimonials

‘Our experience with this Firm largely relates to trademark applications and renewals. We’ve been very satisfied with out experience. I also appreciated that the trademark team introduced us to a Partner in the Patent group to provide an overview on patent issues without additional charge to us. It was greatly appreciated.’

‘I like their stick-to-it-tiveness. As one example, we have found foreign trademark offices do not treat trademark registrations the same way as a registration would be treated by the USPTO. Cowan, Liebowitz, with our advance permission, fights to get the registration the way we want it. In my experience, they always win.’

‘Lynn Fruchter has done yeoman work on our behalf. They know what they are doing and they take the time to explain what we needs to know.’

‘The team gives very effective and commercially-minded advice to our clients outside of the US. They are very responsive and efficient in the way they handle matters.’

‘We are very satisfied with the services provided. Very diligent and thorough.’

‘Deborah Squires is a top-notch trademark lawyer with vast knowledge of the field and insightful perspectives on issues as they arise.’

‘We work with Cowan, Liebowitz & Latman for over 15 years now. They are our go-to trademark law firm in the US. High quality work paired with a highly pragmatic approach and business sense makes them outstanding. Billing is fair. We have so far not had any “loss” in case with Cowan, Liebowitz & Latman, which is a pretty good track record.’

‘Joel Karni Schmidt is our main contact. He is a stellar attorney and great case manageer’

‘Well conversed in US trademark law and provide good advice.’

‘The team has built up invaluable experience for prosecution and portfolio management. This is partly due to their client base for whom they are filing in the United States and all around the world’

‘The trademark team at Cowan, Liebowitz & Latman, P.C. has extensive experience of handling all types of litigation and prosecution matters around the world by managing global trademark portfolio of many large corporate clients. Due to such extensive experience of handling global trademark prosecution matters, they are able to provide effective, efficient and practical advises to its clients. ’

‘I have worked with the team at Cowan, Liebowitz & Latman for many years and they are excellent. They are very responsive and thorough, they are very professional, have original thinking and provide first class service. Just as important, they are very pleasant to work with. ’

‘I work closely with Joel Karni Schmidt from Cowan, Liebowitz & Latman on various trademark matters. Joel is a great attorney. He is very professional, always on top of things, provides great and current advice, and always gives you the feeling that you are in trusted hands. Joel is also very responsive and always nice to work with. I use his services knowing that I am in good hands.’

‘The Cowan, Liebowitz & Latman team combines an in depth knowledge of the law with a strategic and commercial approach. They are also very responsive and a pleasure to work with. Finally, they are very “user friendly”, and I am very comfortable for them to be in direct communication with my clients where this is most effective to progress the matter. ’

‘The team at Cowan, Liebowitz & Latman is fabulous. They are such special people. They have a unique way of maintaining relationships with their clients and their international network – they know also how important their international network is in order to be good for their client and therefore cherish this network. It is one of the nicest firms I have every worked with. It is just like family, but still all very high-end in terms of quality. They send us work, but we also send them work. Both ways it works!’

‘The team handle the US trade marks within a worldwide trade mark portfolio for our mutual client.’

‘Joel Schmidt is an outstanding strategist and provides quality advice on all aspects of brand protection and prosecution.’

‘The team acts very quickly and accurately at the same time. In addition, they are 100 percent reliable. They provide extremely comprehensive, but always very comprehensible, advice, and act in a particularly circumspect manner when doing so.’

‘We would like to mention, in particular, Joel Karni Schmidt for his deep understanding of our clients’ needs and interests and his outstanding ability to meet those needs and interests when representing the clients in trademark application procedures with the USPTO.’

Key clients

Givewith LLC (spinoff from CBS Inc.)

Thompson Hotels & Resorts (a division of Hyatt Corporation)

Sandvik AB

Columbia University

Curtis Instruments, Inc.

Cannonball Wine Co.

Major League Baseball

J. Crew Group, Inc. and Madewell

G-III Apparel Group, Ltd. (DKNY and DONNA KARAN)

The Buckle, Inc.

Sony Pictures Entertainment

QVC, Inc. (now part of Qurate Retail Inc.)

Sunrights, Inc.

Barclays Bank PLC

Tri State Management/Wetson Restaurant Group

Work highlights

  • Registered, maintained, and enforced Major League Baseball’s trademark portfolios in the US and supervising local counsel worldwide for Major League Baseball.
  • Handled the large portfolio of registrations and applications for the famous marks DKNY and DONNA KARAN in the US as well as in other countries throughout the world through local counsel under our supervision.
  • Managed the worldwide clearance and registration program for the trademark portfolio of Morgan Stanley, including strategy counseling.

Dechert LLP

The IP team at Dechert LLP is an attractive choice for multinationals seeking advice on trademark prosecution, enforcement, and licensing. In addition to its strong US coverage, the firm is also able to bring in experts from across its European office network, to advise on all aspects of US and European trademark law. Glenn Gundersen leads the practice in Philadelphia and is recognized here for his expertise in trademark clearance, enforcement and commercial deals and IP-driven corporate transactions. New York-based associate Jennifer Insley-Pruitt assists Gundersen with portfolio management, and is also developing a strong practice in enforcement and litigation in federal court and before the Trademark Trial and Appeal Board.

Practice head(s):

Glenn Gundersen

Other key lawyers:

Jennifer Insley-Pruitt

Key clients

Apple

Willis Towers Watson

LaFargeHolcim

The Ivy League

Zara

VF

The Cousteau Society

Uptime Institute

Work highlights

  • Represented Apple in arguing in favor of registration for applications that have been refused registration, including a current appeals and requests for reconsideration include the marks SMART KEYBOARD for an iPad keyboard, and TVOS for the Apple TV operating system, and the distinctive appearance of the iPhone.
  • Represented the company’s subsidiary Sage Insurance Services in defending trademark litigation in California brought by Sagesure Insurance.
  • Current projects include seeking US trademark registration of the distinctive design of the Kipling backpack for VF.

DLA Piper LLP (US)

DLA Piper LLP (US) provides global IP coverage on high-profile and complex trademark cases, with an additional focus on trademark portfolio management and experience advocating for and drafting IP legislation. Co-chair of the IP and technology practice Ann Ford splits her time between New York and Washington DC, and is highly regarded by clients for her work on trademark transactions, trademark litigation and pre-litigation cases. In San Francisco, Gina Durham chairs the US trademark and copyright team and is a well-regarded trademark litigator for high-profile blue-chip companies; while Frank Ryan in New York co-chairs the IP and tech practice and focuses on litigation, and other IP matters in the sports, media and entertainment sectors.

Practice head(s):

Ann Ford; Gina Durham

Other key lawyers:

Frank Ryan; Keith Medansky

Testimonials

‘The level of detail offered by DLA Piper provides an assurance that your matter is being handled with a great level of care and that the outcome will hopefully be what you and the business are striving for. ’

‘When dealing with high complex matters, there is no comparison as to the level of analysis and care. This is so valuable when you are under such pressure to deliver to the business an outcome to which they will be satisfied or protecting valuable business assets.’

‘Everyone I have worked with are very knowledgeable, yet always seem conscientious about doing the right thing vs. billable hours.’

‘They have integrity, are genuine, provide guidance, and explain potential outcomes depending on the path chosen.’

‘Before choosing DLA Piper as our trademark law firm, I conducted a significant amount of research on not only the best firms but also the most talented attorneys. My research concluded that DLA Piper and Ann Ford were in fact the best. Having now worked with Ann and her team, they are bright, forward-thinking, and creative when dealing with trademark litigation, trademark protection, and related intellectual property. Collectively, I trust DLA Piper to help protect and grow our brands.’

‘Ann Ford could be the best intellectual property attorney for trademarks. When you speak with her, the vast array of her experience becomes evident, quickly. She fully understands the law, the potential issues at hand, how to resolve them, and most importantly, how to protect your brand. If I were starting a law firm, she is my first hire.’

‘This is an incredible diverse and talented team. What makes them particularly special is they take the time to, and really understand our business. They know our nuances, what we consider important and more importantly why certain things are extremely important. They use this information to frame their advice. Some firms say that they are available whenever you need them, DLA Piper’s Trademark team actually is available.’

‘Ann Ford — there’s a reason why every company that I have been with immediately transfers our trademark portfolio to her firm. She is outstanding, one of the absolute best in the business. Great business sense and way of navigating thorny trademark issues.

Key clients

The Dannon Company, Inc.

Altria/Philip Morris USA/Nu Mark/John Middleton Co.

lululemon athletica

Dr. Seuss Enterprises, L.P.

The Boston Consulting Group

FTI Consulting, Inc.

ZeniMax Media Inc.

TD Ameritrade

T. Rowe Price

Mark W. Cross & Co.

UL LLC

CFA Institute

The NOCO Company

Axos Bank

Slack

Eventbrite

Hyatt Hotels Corporation

Kaplan, Inc.

Papa John’s International

Midas International LLC

Graham Holdings (f/k/a the Washington Post Company)

Equinox Holdings, Inc.

SoulCycle, Inc.

TBC Corporation

Ace Hardware Corporation

Aderans Holdings Americas

Work highlights

  • Retained by The Dannon Company as a lead counsel on domestic intellectual property matters
  • Provide Dr. Seuss Enterprises, L.P., with copyright, and media advice, including prosecution, counseling, enforcement, media and merchandise licensing, promotional agreements, sponsorship agreements, global intellectual property enforcement strategy, federal intellectual property infringement litigation and all other intellectual property advice.
  • Engaged to manage Slack’s trademark portfolio, including filings to protect and enforce their brand concurrently with the timing of their IPO.

Haynes and Boone, L.L.P.

Haynes and Boone, L.L.P. fields a team of experienced trademark lawyers across the country, though its strongest presence is in Dallas. Acting for clients in the advertising, telecoms, financial services and music industries, the team handles the full range of IP matters, including domain name disputes, oppositions and enforcement. Contacts in the Dallas office include trademark group chair David Bell, a name to note for international brand management; Purvi Patel Alber, who advises Fortune 500 companies on US and foreign trademark enforcement; and Jeffrey Becker, who is also noted for brand management as well as for advertising issues. 2020 saw the introduction of a number of new team members: in May, Erin Hennessy joined from Bracewell LLP; in August, partner Joseph Matal joined from the USPTO; and in November, Theresa Conduah joined the firm from an in-house role.

Practice head(s):

David Bell

Other key lawyers:

Purvi Patel Alber; Jeffrey Becker; Theresa Conduah; Joseph Matal; Erin Hennessy

Testimonials

‘David Bell is a very good lawyer with an extensive network of international lawyers. The H&B team can consult, help prosecute marks, and provide infringement advice in any country.’

‘David Bell leads the team and is exceptional. Pleasant, efficient and always forward-looking. Tiffany Ferris is a dynamo and very knowledgeable on IP and advertising matters.’

Key clients

AT&T

Xandr

Dallas Cowboys

San Antonio Shoe Company

Starz Entertainment

Halliburton Energy Services

Hachette Book Group

VP Racing Fuels

York Capital Management

RealPage

Work highlights

  • Handled trademark and brand management, including global clearance and risk assessments, prosecution, advertising counseling and social media strategy, for AT&T and Xandr, its advertising and analytics division.
  • Managed the international expansion of STARZ and STARZPLAY branding – including counseling, clearance, global trademark protection strategy.
  • Managed publishing company Hachette Book Group’s trademark portfolio including trademark clearance, prosecution, counseling and enforcement.

Hunton Andrews Kurth LLP

Hunton Andrews Kurth LLP provides comprehensive advice and counsel on the full range of trademark matters, including clearance, evaluation, licensing, enforcement, and portfolio management. The IP team works in conjunction with other of the firm's practice groups, playing a key role in matters ranging from M&A to data security. John Gary Maynard co-heads the IP practice from Washington DC, and leads on brand protection and licensing. Also recommended in DC are Michael Oakes and Tyler Maddry. In New York, IP practice co-leader James Rosini leads on a range of IP matters for clients in sectors such as advertising, entertainment, and publishing. The team saw several departures in 2020: in February, Michael Lennon left for Potomac Law Group and Laurence Posorske joined Arent Fox LLP; and in April, Michael Turner took an in-house role, and Clifford Ulrich departed for Carter, DeLuca & Farrell LLP.

Practice head(s):

John Gary Maynard; Tyler Maddry; James Rosini; Michael Oakes

Other key lawyers:

Jonathan Reichman; Stephen Demm; Susan Smith

Key clients

Ahold Delhaize

Peanuts Worldwide

MIH TECHNOLOGY HOLDINGS B.V.

Work highlights

  • Responsible for clearance, registration, maintenance, and licensing of the US portfolio of trademarks for Ahold Delhaize and routinely handled branding strategy and enforcement protection, including before the USPTO and federal courts.
  • Represented Peanuts Worldwide, which owns all rights to the PEANUTS characters including Snoopy, Charlie Brown, etc., in trademark prosecution, strategy, and licensing.
  • Worked on the worldwide rebranding of the parent company of the largest company in Africa, Naspers/MIH, developing the new name PROSUS.

K&L Gates

The IP practice at K&L Gates handles global trademark registration and enforcement for clients in the manufacturing, aerospace, consumer products, and entertainment industries. The firm-wide portfolio management and IP procurement practice is headed up by Pam Jacobson, a patent attorney in the firm's Seattle office. The group welcomed a number of new hires in 2020: Chicago-based James Shimota joined from Haynes and Boone, L.L.P. in March 2020; and, in August, Thomas Anderton joined from Squire Patton Boggs, Mincheol Kim joined in Orange County from Knobbe Martens Olson & Bear LLP, and Patrick Richards (also in Chicago) joined from private practice.

Practice head(s):

Pam Jabson

Other key lawyers:

James Shimota; Thomas Anderton; Mincheol Kim; Patrick Richards

Key clients

The Proter & Gamble Company / The Gillette Company LLC

Abercrombie & Fitch

Kipling Apparel Corp (VF Corporation)

The Icelandic Milk & Skyr Corporation

University of Oregon

Amazon.com

Valve Corporation

Stratus Technologies

Helly Hansen

Zulily

Kudelski

TripAdvisor

King & Spalding LLP

The team at King & Spalding LLP is well known for advising major domestic and multinational corporates clients on IP disputes, but is recognized here for its expertise in portfolio management, trademark registration, and enforcement. Clients are often in industries such as consumer products, food and beverage, and retail. Contacts in the San Fransisco office include Kenneth Steinthal, who leads the practice group and is recommended for trademark disputes; and Richard Groos, a name to note for trademark portfolio counseling. On the East Coast, Kathleen McCarthy in New York has a strong track record in trademark infringement cases. Also of note, in May 2020, the group welcomed an entire team from Boies Schiller Flexner LLP, including partners Craig Bessenger, Julia Bredrup, Jeanne Fugate, and Albert Giang.

Practice head(s):

Kenneth Steinthal

Other key lawyers:

Richard Groos; Kathleen McCarthy; Craig Bessenger; Julia Bredrup; Jeanne Fugate; Albert Giang

Key clients

The Home Depot, Inc.

The Coca-Cola Company

Mary Kay Inc.

Sephora USA, Inc.

DFS Group, LP

The Madison Square Garden Company

Ignite Restaurant Group

Steve Jackson Games

Truist (dba SunTrust Banks, Inc.)

Work highlights

  • Represented The Home Depot in IP matters, and served as the company’s trademark and copyright counsel for more than 20 years.
  • Represented Sephora in a wide range of trademark strategy matters and in the enforcement and protection of the company’s brands and have done so for more than 20 years.
  • Represented The Coca-Cola Company and its subsidiaries in a wide range of trademark strategy matters and in the enforcement and protection of the company’s brands for more than 20 years.

Loeb & Loeb LLP

The IP team at Loeb & Loeb LLP is fully integrated into broader teams with expertise in regulation, privacy, security and advertising law, enable the group to provide IP-driven advice from several different angles. In particular, the group is noted for its advice on trademark availability and scope of protection for start-ups, entertainment personalities and consumer brands. It is also highly experienced in both US and international registration and due diligence for IP-related acquisitions. Los Angeles-based IP protection chair Melanie Howard has broad expertise in portfolio management, including acquisitions and enforcement. Chicago office managing partner Douglas Masters is an expert in trademark clearance and registration, as well as general brand protection strategies.

Practice head(s):

Melanie Howard

Other key lawyers:

Douglas Masters

Testimonials

‘They understand our business and have depth of knowledge across the industry.’

‘The industry knowledge, always-on mentality and collaboration with our team are excellent. We do not have to wait for a response and the team is flexible. We’ve given them more and more work as time passes.’

Key clients

Google

Tyler “Ninja” Blevins

Dwyane Wade

State Farm

Hudson’s Bay Company/Saks Fifth Avenue and Lord & Taylor

City National Bank

Unilever

Gap Inc.

St. John Knits

Entertainment Studios

Arnold Schwarzenegger

The Green Hornet

Trustees of the Second Trust of Alfred Hitchcock and Alfred Hitchcock, LLC

Hollywood Foreign Press Association (“HFPA”)

FAT Brands Inc.

Estate of B.B. King

Various artists and performers – Midland, Carrie Underwood, Vince Gill, Jerrod Niemann, Casting Crowns, Runaway June, Andrew Peterson, Building 429, Luke Combs and Kane Brown.

Grand Ole Opry

Work highlights

  • Represented Google in trademark counseling matters, including advice regarding the use of trademarks in connection with the use and marketing of the Google platform.
  • Represented Tyler “Ninja” Blevins, a highly viewed gamer and social media influencer, in connection with the licensing of his right of publicity/persona and brand.
  • Represented FAT Brands Inc., a leading global franchising company, in connection with overseeing the company’s international trademark and branding issues and assisting with IP due diligence in corporation acquisitions.

McDermott Will & Emery LLP

McDermott Will & Emery LLP is 'extremely knowledgable' about all matters relating to brand management, including trademark enforcement and licensing. The group has stood out in particular in IP-driven transactional work for high-profile brands in the areas of healthcare, life sciences, fintech, and other technology-focused sectors. Chicago-based Christina Martini heads up the global trademark group and has broad expertise in trademark and domain name issues as well as in Internet and entertainment law. William Gaede in Silicon Valley is a contact for trademark litigation in the life sciences and healthcare sectors. In April 2020, John Dabney, Mary Hallerman, and Richard Kim departed for Snell & Wilmer LLP.

Practice head(s):

William Gaede; Christina Martini

Testimonials

‘Everyone is extremely knowledgeable and no one insists on being the expert. They are willing to go to their colleagues to help get the correct answer.’

‘The team provides consistent, practical advice with outstanding responsiveness. Everyone is highly skilled and a pleasure to work with; they truly act as an extension of my in-house resources.’

Key clients

Greenpark Sports, Inc.

Hitachi, Ltd.

Univision Communications

Block.one

Ilegal Mezcal

New York Life Insurance Company

Young Innovations, Inc.

Terlato Wines International

Zodiac Pool Systems LLC

Work highlights

  • Served as trademark counsel to Hitachi for over 20 years, providing guidance around strategic trademark portfolio management.
  • Advised Univision Communications for over two decades on a wide range of intellectual property matters, including trademark clearance, prosecution and enforcement matters, as well as complex international copyright matters.
  • Managed various phases of New York Life’s international trademark portfolio, lead enforcement actions around competitor misuse and misappropriation of marks, and counsel on advertising, copyright and trademark-related issues.

Morgan, Lewis & Bockius LLP

With offices on both the East and West coasts, Morgan, Lewis & Bockius LLP is well placed to advise on the full range of IP matters, including transactions, trademark portfolio management, counseling and litigation. Clients are often international high-profile corporations leading in the consumer products, food and beverages, pharmaceuticals, fashion, retail, and healthcare industries. Karen Butcher in Washington DC leads the trademark and copyright practice, advising multinationals on IP matters related to M&A, licensing, and corporate reorgnizations. She works alongside Anita Polott, an expert in managing US and international trademark portfolios, as well as trademark litigator Kevin Fee. In Boston, Josh Dalton focuses on trademark litigation, while Rachelle Dubow is an expert in counseling, licensing, and protection of trademarks. Several lawyers joined the team from Cooley LLP in July 2020.

Practice head(s):

Karen Butcher; Josh Dalton; Kevin Fee

Other key lawyers:

Anita Polott; Kevin Fee; Josh Dalton; Rachelle Dubow; Nicholas Bolter

Key clients

Anthem, Inc.

Artec Europe S.a.r.l.

Diageo PLC

Edgewell Personal Care

Evolve By Nature, Inc.

Farmers Restaurant Group / Founding Farmers

HollyFrontier Corporation

Office Depot Inc.

Restoration Robotics, Inc.

Seaside Community Development Corporation

SimpliSafe, Inc.

Urban Outfitters

Wayfair

Work highlights

  • Handled the global trademark portfolio for Artec Europe S.a.r.l., including all domestic and international trademark clearance, prosecution, maintenance, and enforcement.
  • Provided sole trademark services to Anthem, Inc. in the US and coordinated counsel internationally.
  • Regularly advise Diageo on US and global brand strategy and trademark clearance and filing programs, as well as disputes, enforcement, and litigation.

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP is an IP boutique focusing on trademark prosecution and portfolio management for clients in the technology, life sciences, and consumer products sectors. Managing partner Bradley Cohn in Chicago is the contact for trademark prosecution and international portfolio management, and Thad Chaloemtiarana is recommended for trademark transactions and licensing.

Practice head(s):

Bradley Cohn

Other key lawyers:

Thad Chaloemtirarana

Baker & Hostetler LLP

Baker & Hostetler LLP operates in numerous offices across the US, advising a diverse set of clients in the areas of fashion and retail, music media and technology on all IP-related matters. The team frequently prosecutes active filings for multinationals operating in different jurisdictions and provides additional niche counseling for media companies on complex matters such as cartoon character IP rights. In Washington DC, IP group chair Deborah Wilcox focuses on registering, monetizing, and enforcing trademarks for mobile apps and social media sites, and has experience enforcing trademark rights against domain name squatters. Cleveland-based trademark team lead Mark Tidman assists clients with trademark portfolio management, enforcement and trade dress matters.

Practice head(s):

Mark Tidman; Deborah Wilcox

Key clients

Cardinal Health, Inc.

Konica Minolta

Ascena Retail Group, Inc.

LG Innotek, LG Electronics Korea and LG Electronics USA

Interblock Gaming

Evenflo Company, Inc., Goodbaby International Holdings, Inc., Cybex

The J.M. Smucker Company

Showa Glove Co.

The Hanson Group, LLC; Guardian Innovations, LLC

State of Georgia

Culligan International Company

Big Lots Stores, Inc.

CBOE Global Markets

Globefill Incorporated

Banner & Witcoff, Ltd.

Boutique IP firm Banner & Witcoff, Ltd. advises major corporates on a full range of trademark matters. Headed up by Washington DC-based Chunhsi Andy Mu, the group has experience of trademark counseling and maintenance, prosecution, licensing and enforcement, acting for clients in the finance and insurance, travel, and life sciences industries. Contacts in the Chicago office include Helen Hill Minsker, who focuses on trademark counseling, prosecution and registration; and Joseph Berghammer, a name to note for trademark enforcement and maintenance.

Practice head(s):

Chunhsi Andy Mu

Other key lawyers:

Helen Hill Minsker; Joseph Berghammer

Brinks Gilson & Lione

Leveraging a solid platform across the US, IP boutique Brinks Gilson & Lione has a roster of experienced attorneys dedicated, in large part, to trademark counseling and protection. In addition, the team advises on the IP aspects of trademark acquisitions for clients in the medical device and CBD industries, as well as for those in the fashion and higher education sectors. Chicago-based practice co-chair Andrew Avsec advises on brand protection and advertising matters, while joint practice chair Howard Michael focuses on trademark counterfeiting matters. The group is also well regarded for trademark prosecution and licensing.

Practice head(s):

Andrew Avsec; Howard Michael

Cooley LLP

Cooley LLP runs a sizeable trademark team with a long history of maintaining valuable international trademark portfolios, advising on general trademark prosecution, protection, and enforcement for a variety of corporate clients. In New York, Jeff Greene focuses on foreign and domestic brand counseling, and also regularly advising clients on trademark acquisitions, while Bobby Ghajar in Santa Monica advises a number of major brands, including food and drinks companies, on trademark portfolio management and enforcement. Also in Santa Monica, John Crittenden is recommended for trademark counseling and prosecution. Nick Bolter joined Morgan, Lewis & Bockius LLP in June 2020, and Charlie Winckworth left to establish a solo practice in July 2020.

Other key lawyers:

Jeff Greene; Bobby Ghajar; John Crittenden

Fenwick & West LLP

The 'top-notch' trademark counseling and protection team at Fenwick & West LLP provides a full range of trademark advice to multinational corporations and household names in the areas of entertainment, data analytics, advertising, and digital and mobile gaming. Headed by Connie Ellerbach in Mountain View, the team frequently advises on trademark registration and enforcement, and domain name issues, as well as international trademark registration and transactional due diligence. Also recommended in Mountain View are Sally Abel, who specializes in international trademark management, and Karen Webb, a name to note for social media trademark law. In recent years its client list has expanded to include notable Silicon Valley companies operating in software, blockchain, and cryptocurrency.

Practice head(s):

Connie Ellerbach

Other key lawyers:

Sally Abel; Karen Webb

Testimonials

‘The trademarks team at Fenwick is top-notch. They excel in managing complex clearance projects, negotiating creative but practical resolutions to trademark disputes, and providing clear and actionable guidance on a range of trademark matters. They make it easy for our in-house team to provide value to our clients with legal solutions that take into account the evolving realities of our business. Beyond the excellent quality of legal work they provide, they also employ a team of all around great human beings. They are kind, honest, trustworthy, and value diversity and inclusion.’

‘There are a number of individuals at the firm that stand out with continuous efforts to meet the pressing demands of our business and legal teams. Notable partners include Sally Abel and Karen Webb. Each of these individuals has contributed substantial value to our brand protection efforts over the years. As noted above, they each think critically and creatively to develop tailored solutions to our trademark disputes and issues. They put in the effort to stay up to date on developments not only in the trademark legal practice, but also with updates specific to our business — and this is evident in the way their strategies evolve with the needs of our business.’

Key clients

Alteryx

Cloudflare

Delphix

General Motors

Niantic

Peloton Interactive

Riot Games

Scopely

Prime Trust, LLC

NVIDIA

Facebook Reality Labs (Oculus)

Libra Association

Work highlights

  • Represented Tanium in its lawsuit against Onica, a cloud consulting and managed services company that is a subsidiary of Rackspace.

Greenberg Traurig, LLP

The trademark and brand management team at Greenberg Traurig, LLP is experienced in trademark prosecution, licensing, policing, and portfolio management. It also fields a deep bench of attorneys with experience in trademark litigation. In the Orange County office, Susan Heller serves as chair of the global trademark and brand management group, and provides comprehensive trademark support to notable celebrities and companies. Chicago-based Mark Galis co-chairs the global IP and technology practice, and focuses on patent and trademark portfolio management; and practice vice chair Joel Feldman in Atlanta is recommended for domestic and international brand management and IP disputes.

Practice head(s):

Susan Heller; Mark Galis; Joel Feldman

Key clients

United Parcel Service, Inc.

Jennifer Lopez

Katy Perry/Killer Queen, LLC

Caesars Entertainment Corporation

Westbrook Inc.

Godiva Chocolatier, Inc.

Allegiant Travel Company

Shiseido Company, Ltd.

Broadridge Financial Solutions, Inc.

Jones Day

Jones Day provides comprehensive advice on contentious and non-contentious trademark matters, including trademark prosecution, clearance, portfolio management, enforcement, and litigation. Additionally, the team acts as counsel on major IP transactions and frequently works alongside colleagues in the firm's European and Asian offices to handle global trademark enforcement. Clients are often operating in sectors such as the automotive, luxury brands, pharmaceuticals, software, food and drink, and education industries. Contacts in the team include Cleveland-based practice leader Meredith Wilkes, who is noted in particular for trademark litigation, and Carrie Kiedrowski, who works on brand protection, portfolio management, and trademark enforcement. In Washington DC, Jessica Bradley focuses on Lanham Act litigation in trademarks and false advertising.

Practice head(s):

Meredith Wilkes

Other key lawyers:

Carrie Kiedrowski; Jessica Bradley

Key clients

The Wikimedia Foundation

BMW Group (including Rolls-Royce Motorcars Ltd. and MINI)

The Rock and Roll Hall of Fame and Museum

eos Products LLC

Kelley Drye & Warren LLP

The team at Kelley Drye & Warren LLP has strengths in brand global protection, day-to-day maintenance and management, registration, and counseling, acting for an impressive roster of high-profile clients in the fashion, retail, media and entertainment and consumer products sectors. Based in New York, Andrea Calvaruso chairs the firm's trademark and copyright group and has experience of a huge variety of contentious and non-contentious IP matters. In June 2020 Kevin Cadwell and David Clonts left to establish Cadwell, Clonts & Reener.

Practice head(s):

Andrea Calvaruso

Key clients

Endeavor (Formerly WME | IMG)

Miss Universe Organization (IMG Universe, LLC)

Major League Baseball Players’ Association (MLBPA)/MLB Players, Inc.

Mansur Gavriel LLC

Foot Locker Retail Inc.

New Avon LLC

Take-Two Interactive Software, Inc.

Ralph Lauren Corp.

Bacardi & Co. Ltd.

Bobbi Brown Evolution

Jones Road Beauty

Federal National Mortgage Association (bda Fannie Mae)

Ashley Stewart, Inc.

Jockey International, Inc.

Chico’s FAS

Sisense

PSORITE.COM

Hudson’s Bay Company (owner of retailers such as Saks Fifth Avenue, Hudson’s Bay and others)

Work highlights

  • Served as primary IP counsel to Endeavor (formerly WME | IMG); represented the company in connection with trademark counseling, enforcement, clearance and filings, as well as maintenance of its worldwide trademark portfolio.
  • Served as primary trademark counsel to Take-Two Interactive Software (developer of video games such as GRAND THEFT AUTO) advising on trademark counseling, enforcement and opposition matters, including a number of matters currently pending in the TTAB.
  • Served as primary IP counsel to Foot Locker Retail, Inc., providing representation and counseling on a wide range of IP matters including trademark, copyright and promotional clearances, internet and promotional content, domain names, trademark filings, new product and promotion design, licensing agreements, cross-promotion enforcement matters.

Knobbe Martens Olson & Bear LLP

Knobbe Martens Olson & Bear LLP is noted in particular for its expertise in trademark enforcement, where it advises start-ups and Fortune 500 companies in industries such as technology, media and entertainment, and publishing. A key figure in the Orange County-based team is managing partner Steven Nataupsky, an experience litigator, who is recommended for enforcing and defending infringement claims. Also recommended are Susan Natland, who focuses on trademark enforcement, clearance, and prosecution; and Jeff Van Hoosear, who has experience of international and domestic trademark prosecution.

Practice head(s):

Steven Nataupsky; Jeff Van Hoosear; Susan Natland

Key clients

21st Century Fox

Broadcom Corp.

Urban Decay Cosmetics (L’Oreal)

St. John’s Knits

Chico’s

White House Black market

Public Storage

Mazda North America

Quicksilver

C1RCA

BB Dakota

7 Diamonds

Pacific Life

SchoolsFirst

First American Financial

House Foods

Bandai

BJ’s Restaurants, Inc.

Jelly Belly Candy Company

Athene (US)

Ulthera, Inc.

Fox Media

Arbonne

Manhattan Reachwear

Fortinet

Starbucks Corporation

Expedia, Inc.

Norton Rose Fulbright US LLP

Norton Rose Fulbright US LLP is active in all areas of IP law, and is recognized here for representing clients in trademark registration, acquisitions, management, and enforcement matters. The team is also experienced in trademark mediation and arbitration, as well as matters before the US Patent and Trademark Office. Contacts in the Austin office include US head of IP brands Alicia Morris Groos, a highly experienced litigator, who manages domestic and international IP portfolios; and US head of IP James Repass, who focuses on joint ventures and licensing arrangements. Global head of IP Timothy Kenny is based in Minneapolis and advises on strategic portfolio counseling and management. In May 2020, Michael Metteauer departed for Pirkey Barber.

Practice head(s):

Alicia Groos; Jim Repass; Tim Kenny

Key clients

Archdiocese of St. Paul/Minneapolis

Electronic Arts

Fair Isaac Corporation

Hadassah, The Women’s Zionist Organization

SHOPHQ

Standard Homeopathic

Tiff’s Treats

USA Warriors

Work highlights

  • Represented Fair Isaac Corporation, dba FICO in matters involving trademarks, copyrights, and patents and includes litigation, oppositions/cancellations, counselling, prosecution and strategic portfolio management.
  • Provided Standard Homeopathic with day-to-day counseling, including help with development of strategy and handling of trademark searches, trademark prosecution/maintenance registration, licensing and enforcement, as well as copyright, social media and advertising matters.
  • Retained to analyze, strategize and manage a global search and filing project related to the rebranding of EA’s primary mark and logo.

Orrick, Herrington & Sutcliffe LLP

Orrick, Herrington & Sutcliffe LLP is noted for its bicostal domestic platform and its strong relationships with IP attorneys in Europe and Asia, enabling the IP team to manage global IP portfolios, file trademarks, and advise on trademark clearance and licensing worldwide. Its clients are generally in the alternative energy, consumer products, biotechnology, food and beverages, and pharmaceuticals sectors. Contacts on the East Coast include Peter Vogl in New York, who primarily works in trademark prosecution in the life sciences and technology sectors, and Washington DC-based Sten Jensen, who serves as co-chair of the firm's wider IP practice and is also experienced with IP in the technology sector. In the San Fransisco office, Beth Goldman is recommended for transactions and related trademark matters, and Betsy Wang Lee was promoted to partner in February 2020.

Practice head(s):

Sten Jensen; Jared Bobrow

Other key lawyers:

Beth Goldman; Peter Vogl; Betsy Wang Lee

Testimonials

‘Kristin and her team are thoughtful, responsive and practical — I very much appreciate their support.’

Key clients

Vera Wang Group

Salesforce.com

Viking River Cruises

Urban Zen by Donna Karan

BIC Corp.

Anika Therapeutics

Beyond Meat

Asana

Alit Wines

Stoller Vineyards

Pryor Cashman LLP

Based in New York, the IP team at Pryor Cashman LLP advises clients on all aspects of trademark law, from registration to prosecution and enforcement. 'Always responsive', Brad Rose chairs the IP group and handles prosecution and enforcement matters for celebrities and well-known brands, particularly those in the music, digital media, fashion, and consumer products industries. Also recommended is Dyan Finguerra-DuCharme, who advises a range of clients from start-ups to multinationals on the full scope of trademark and trade dress matters.

Practice head(s):

Brad Rose

Other key lawyers:

Dyan Finguerra-DuCharme

Testimonials

‘The team is extremely proactive and clear in outlining and explaining to our business all IP related issues. They simplify the process and provide significant support to our business.’

‘Brad Rose, our main relationship partner, is always responsive, up to speed, and provides first in class customer services on all matters large and small.’

Key clients

WHP Global

L’OREAL

Richemont

Honda Motor Co., Ltd.

Cetera Financial Group

sbe Entertainment Group

Lukka Inc.

Cher