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trademark prosecution

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MSK's Trademark practice supports clients in establishing and protecting their intellectual property. A sampling of the services provided include:

  • Conducting availability searches

  • Preparing, filing and prosecuting trademark applications in the United States throughout the world

  • Providing IP transaction support in the areas of asset disposition and mergers & acquisitions

  • Providing representation before the United States Trademark Trial and Appeal Board

  • Assisting in policing clients’ trademark rights throughout the world

  • Representing clients in connection with the negotiation and drafting of trademark licenses, assignments, and other similar transactions

  • Management of Ocean Spray's worldwide trademark portfolio

  • Represents a large number of United Kingdom-based clients from the entertainment, sports, food, clothing, machinery, animation, furniture and other industries

Spotlight

A trademark – such as a word or a logo – identifies the source of a product or service. As such, trademarks are critical assets of all businesses. MSK's trademark practice provides its clients with full-service domestic and international trademark representation. We file and prosecute trademark applications worldwide, perform trademark availability searches, provide representation before the United States Trademark Trial and Appeal Board, and assist our clients in policing their trademark rights. In addition, MSK represents its clients in connection with the negotiation and drafting of trademark licenses, assignments, and other similar transactions.

Cases

Cases

  • Obtained summary judgment on likelihood of confusion under Lanham Act and litigated differing legal requirements for claims under the Lanham Act and the Federal Anti-cybersquatting Consumer Protection Act. Rexel, Inc. v. Rexel Int’l Trading Corp., 540 F. Supp.2d 1154 (C.D. Cal. 2008).

  • Awarded injunction and attorneys’ fees in an action for trademark infringement under the Lanham Act. American Leak Detection, Inc. v. Khan, Case No. 5:13-CV-02020-JGB (C.D. Cal 2014).

  • Obtained a “precedential” opinion sustaining, on both likelihood of confusion and dilution grounds, an opposition to the registration of a trademark infringing the world-famous “Motown” trademark. UMG Recordings, Inc. v. Mattel, Inc., 100 U.S.P.Q. 2d 1868 (T.T.A.B. 2011).

  • Represented Activision Publishing, Inc. and obtained entry of judgment and refusal of registration in connection with consolidated trademark oppositions alleging likelihood of confusion and dilution. Activision Publishing, Inc. v. Activision TV, Inc., Opposition No. 91195837 (T.T.A.B. 2015).

  • Obtained summary judgment and dismissal with prejudice of cancellation petition alleging trademark abandonment. Transport For London v. Dynasty Footwear, Ltd., Cancellation No. 92057466 (T.T.A.B. 2015).

  • Obtained favorable decision on the famous mark exception to the territoriality limitations of trademark law. London Regional Transport v. Intershoe, Inc., 2006 WL 2032540 (T.T.A.B. 2006).

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News

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