Trademarks

A company’s protection of its brand names and the goodwill they represent is critical to success in the marketplace. Our trademark practice includes protecting a company’s marks, logos, color schemes, product packaging, and designs. We have extensive experience protecting the brands of companies relating to pharmaceuticals, medical devices, telecommunications, clean technology, and computer hardware and software. We have done the same for colleges, universities, and nonprofit institutions.

We guide our clients in cost-effective strategies for clearance of marks in their particular industries. The markets and the way the mark is to be used determine the level of searching that is warranted. Through our firm's extensive experience in performing such searches, you can feel confident that your adoption of a mark is in good faith and that the prosecution of the trademark through to registration will be streamlined.

Hamilton Brook Smith Reynolds prepares and prosecutes trademark and service mark applications for federal registration in the USPTO. Working with our select group of foreign law firms, we obtain registrations for our clients’ trademarks throughout the world. Our substantial experience includes gaining community trademark registrations in Europe and international registrations under the Madrid Protocol. We also obtain U.S. registrations for international clients.

Our attorneys have extensive experience in contested trademark matters, such as opposition and cancellation actions in the USPTO. We also handle infringement actions and unfair competition actions in state and federal courts. Our firm concentrates on obtaining appropriate resolutions consistent with our clients’ strategic goals.

Our trademark services include:

  • U.S. and international trademark prosecution and registration
  • Opinions on trademark adoption, infringement, and freedom-to-use
  • Administrative proceedings, including trademark oppositions and cancellation actions
  • Agreements relating to trademark licensing, concurrent use, and employee obligations
  • Litigation in enforcing trademark rights against infringers or in defending continued use of a mark in the face of charges of infringement

We have obtained thousands of trademarks for our clients in areas such as pharmaceutical products, social media, telecommunications and mobile communication devices, Internet-enabled eyewear, operation management software, ticketing software, educational software systems, manufacturing control systems and components, environmental heating/cooling and water supply systems, extended-life battery systems, medical devices, and disease diagnostic tests. We also have handled branding for trade shows, restaurants, and colleges/universities. Among the consumer products that we have branded are food, beverages and candies, athletic and outdoor footwear and clothing, athletic and exercise equipment and accessories, video games, and musical instruments and recordings. In the area of nonprofit institutions, we have worked with educational and treatment centers for autistic children, women’s shelter facilities, and programs for disadvantaged youth.

Our litigation experience includes:

  • Advised an international consumer goods manufacturer on the protection of its internationally recognized trademark in the U.S. marketplace.
  • Represented major digital marketing company in trademark dispute, sending cease-and-desist letter resulting in infringer ceasing all infringing activity without the expense of a lawsuit.
  • Represented plaintiffs in the digital marketing industry in trademark action in district court, resulting in very favorable settlement agreement enjoining defendants from use of mark.
  • Represented a major digital marketing client in a copyright dispute relating to a marketing information document.  We prepared and sent a cease-and-desist letter resulting in the infringer ceasing all infringing activity without the expense of a lawsuit.
  • Defended a major franchisor in litigation by a competitor who alleged that the client’s new nationwide identity program infringed the competitor’s registered trademark.  After we asserted a counterclaim that the competitor’s own trade name infringed one of our client’s marks, the case was settled on favorable terms that included a concurrent use agreement.
  • Defended a computer hardware provider in a trademark opposition brought by a major data processing company.  We were successful in an appeal before the Court of Appeals for the Federal Circuit in upholding the dismissal of the opposition against our client’s application, and our client’s trademark became registered.
  • Represented a trademark owner in an infringement action in the high-end jeans industry.  We forced settlement on the eve of the trial on terms favorable to our client, including change in the defendant company’s identity and transfer of its domain name to our client.
  • Represented trademark owner in infringement action in the medical device industry.  We reached settlement before the defendant answered the complaint, under which the defendant changed its corporate and domain names and stopped it use of our client’s trademark.
  • Represented a nationwide retailer accused of trademark infringement in a state court action. We succeeded in obtaining summary judgment in favor of our client by showing, through the plaintiff’s own testimony, that the channels of trade were not the same.
  • Represented a trademark owner in an infringement action for electronics products in which we obtained a preliminary injunction that forced a settlement that included a permanent injunction and payment of our client’s attorney fees.
  • Represented a client in an online trademark and copyright infringement action relating to collectible sculptural works. We secured a successful result with the infringers’ ceasing infringing activities on the eBay® website by use of the “take down” procedures.
  • Represented a prominent healthcare company in a trademark dispute against a startup company’s website, resulting in the competitor ceasing its misuse of our client’s trademarks.
  • Represented a renowned research institution in a trademark infringement action against a publisher.  We quickly reached settlement on terms favorable to our client, including a change of the defendant’s corporate and domain names and cessation of its use of our client’s trademark and the entry of a consent judgment against the defendant.
  • Represented a manufacturer of consumer electronics equipment in an unfair competition action in the District of New Hampshire against an unauthorized reseller.  The litigation settled under an arrangement with the defendant ceasing its unauthorized sales.
  • Represented a brand manufacturer of communication and computer peripheral hardware against a new retailer that adopted a similar name.  We developed a strategy to send a cease-and-desist letter at the same time that we filed an infringement action, which led to a quick settlement in which the infringer stopped all use of the infringing name and phased over to a new identity.
  • Represented owner of social networking, media, and thought exchange website in a trademark dispute with an internet forum of similar scope and purpose, and were successful in securing an injunction.  The defendant attempted to dissolve the injunction and to move the case out of Massachusetts.  Against a barrage of motions, we succeeded in keeping the defendant from dismissing the case or moving it.  We were also successful in keeping the injunction in force, resulting in a finding of contempt against the defendant for violating the injunction.  The case ended with the defendant changing its name.
  • Represented the owner of trademarks in social networking space against another company with an infringing domain name and trademark.  The matter ended with the other company changing its name.
  • Represented a registrant in a cancellation proceeding for a service mark for vacation rentals in Italy to the general public and business entities. We were successful in securing termination and dismissal of the cancellation proceeding.
Trademarks
Overview

A company’s protection of its brand names and the goodwill they represent is critical to success in the marketplace. Our trademark practice includes protecting a company’s marks, logos, color schemes, product packaging, and designs. We have extensive experience protecting the brands of companies relating to pharmaceuticals, medical devices, telecommunications, clean technology, and computer hardware and software. We have done the same for colleges, universities, and nonprofit institutions.

We guide our clients in cost-effective strategies for clearance of marks in their particular industries. The markets and the way the mark is to be used determine the level of searching that is warranted. Through our firm's extensive experience in performing such searches, you can feel confident that your adoption of a mark is in good faith and that the prosecution of the trademark through to registration will be streamlined.

Hamilton Brook Smith Reynolds prepares and prosecutes trademark and service mark applications for federal registration in the USPTO. Working with our select group of foreign law firms, we obtain registrations for our clients’ trademarks throughout the world. Our substantial experience includes gaining community trademark registrations in Europe and international registrations under the Madrid Protocol. We also obtain U.S. registrations for international clients.

Our attorneys have extensive experience in contested trademark matters, such as opposition and cancellation actions in the USPTO. We also handle infringement actions and unfair competition actions in state and federal courts. Our firm concentrates on obtaining appropriate resolutions consistent with our clients’ strategic goals.

Our trademark services include:

  • U.S. and international trademark prosecution and registration
  • Opinions on trademark adoption, infringement, and freedom-to-use
  • Administrative proceedings, including trademark oppositions and cancellation actions
  • Agreements relating to trademark licensing, concurrent use, and employee obligations
  • Litigation in enforcing trademark rights against infringers or in defending continued use of a mark in the face of charges of infringement
Representative Experience

We have obtained thousands of trademarks for our clients in areas such as pharmaceutical products, social media, telecommunications and mobile communication devices, Internet-enabled eyewear, operation management software, ticketing software, educational software systems, manufacturing control systems and components, environmental heating/cooling and water supply systems, extended-life battery systems, medical devices, and disease diagnostic tests. We also have handled branding for trade shows, restaurants, and colleges/universities. Among the consumer products that we have branded are food, beverages and candies, athletic and outdoor footwear and clothing, athletic and exercise equipment and accessories, video games, and musical instruments and recordings. In the area of nonprofit institutions, we have worked with educational and treatment centers for autistic children, women’s shelter facilities, and programs for disadvantaged youth.

Our litigation experience includes:

  • Advised an international consumer goods manufacturer on the protection of its internationally recognized trademark in the U.S. marketplace.
  • Represented major digital marketing company in trademark dispute, sending cease-and-desist letter resulting in infringer ceasing all infringing activity without the expense of a lawsuit.
  • Represented plaintiffs in the digital marketing industry in trademark action in district court, resulting in very favorable settlement agreement enjoining defendants from use of mark.
  • Represented a major digital marketing client in a copyright dispute relating to a marketing information document.  We prepared and sent a cease-and-desist letter resulting in the infringer ceasing all infringing activity without the expense of a lawsuit.
  • Defended a major franchisor in litigation by a competitor who alleged that the client’s new nationwide identity program infringed the competitor’s registered trademark.  After we asserted a counterclaim that the competitor’s own trade name infringed one of our client’s marks, the case was settled on favorable terms that included a concurrent use agreement.
  • Defended a computer hardware provider in a trademark opposition brought by a major data processing company.  We were successful in an appeal before the Court of Appeals for the Federal Circuit in upholding the dismissal of the opposition against our client’s application, and our client’s trademark became registered.
  • Represented a trademark owner in an infringement action in the high-end jeans industry.  We forced settlement on the eve of the trial on terms favorable to our client, including change in the defendant company’s identity and transfer of its domain name to our client.
  • Represented trademark owner in infringement action in the medical device industry.  We reached settlement before the defendant answered the complaint, under which the defendant changed its corporate and domain names and stopped it use of our client’s trademark.
  • Represented a nationwide retailer accused of trademark infringement in a state court action. We succeeded in obtaining summary judgment in favor of our client by showing, through the plaintiff’s own testimony, that the channels of trade were not the same.
  • Represented a trademark owner in an infringement action for electronics products in which we obtained a preliminary injunction that forced a settlement that included a permanent injunction and payment of our client’s attorney fees.
  • Represented a client in an online trademark and copyright infringement action relating to collectible sculptural works. We secured a successful result with the infringers’ ceasing infringing activities on the eBay® website by use of the “take down” procedures.
  • Represented a prominent healthcare company in a trademark dispute against a startup company’s website, resulting in the competitor ceasing its misuse of our client’s trademarks.
  • Represented a renowned research institution in a trademark infringement action against a publisher.  We quickly reached settlement on terms favorable to our client, including a change of the defendant’s corporate and domain names and cessation of its use of our client’s trademark and the entry of a consent judgment against the defendant.
  • Represented a manufacturer of consumer electronics equipment in an unfair competition action in the District of New Hampshire against an unauthorized reseller.  The litigation settled under an arrangement with the defendant ceasing its unauthorized sales.
  • Represented a brand manufacturer of communication and computer peripheral hardware against a new retailer that adopted a similar name.  We developed a strategy to send a cease-and-desist letter at the same time that we filed an infringement action, which led to a quick settlement in which the infringer stopped all use of the infringing name and phased over to a new identity.
  • Represented owner of social networking, media, and thought exchange website in a trademark dispute with an internet forum of similar scope and purpose, and were successful in securing an injunction.  The defendant attempted to dissolve the injunction and to move the case out of Massachusetts.  Against a barrage of motions, we succeeded in keeping the defendant from dismissing the case or moving it.  We were also successful in keeping the injunction in force, resulting in a finding of contempt against the defendant for violating the injunction.  The case ended with the defendant changing its name.
  • Represented the owner of trademarks in social networking space against another company with an infringing domain name and trademark.  The matter ended with the other company changing its name.
  • Represented a registrant in a cancellation proceeding for a service mark for vacation rentals in Italy to the general public and business entities. We were successful in securing termination and dismissal of the cancellation proceeding.
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