MSK’s award-winning trademarks and brands service is supported by the firm’s unparalleled understanding of intellectual property, its value, and the power of protection – a history that goes back over 115 years.

Our trademarks and brands team represents globally recognized brands, legacy brands, individual creators, and emerging innovators in all areas, including: 

Global Brand Strategy

MSK’s trademarks team represents and delivers some of the most well-known brands in the world with strategic, business-minded advice on brand strategy domestically and abroad. By collaborating with and advising our clients on their global brand strategy, we ensure that our clients’ key trademarks that are of greatest importance to the client’s individual objectives are protected in international jurisdictions.

Clearing, Vetting, and Filing Trademarks

In an increasingly crowded and diversifying market, precision is important when adopting a brand. We work with well-established and emerging brands to perform searches, clearances, investigations, state and federal domestic filings, and international filings via treaties and a carefully vetted network of foreign counsel.

Trademark Portfolio Maintenance and Monitoring

Our lawyers and other trademark professionals efficiently and effectively handle maintenance and portfolio management – from portfolios of 1 to over 10,000 records, and in over 100 jurisdictions – efficiently using customized software and decades of experience in brand management. Clients call on us for monitoring at trademark offices and in the marketplace, responding to office actions, and appealing denials of registration.

Trademark Rights Enforcement

To ensure your brand stays strong and protected, MSK’s trademark team leverages its deep history of IP protection in trademark enforcement services, including domain name proceedings, social media enforcement, and anti-counterfeiting in physical locations, at the ports and online. With decades of experience in protecting IP rights, MSK uses a sophisticated strategy to help prevent and pursue infringements wherever they may occur.

TTAB and Federal Litigation

The firm has handled hundreds of USPTO Trademark Trial and Appeal Board oppositions and cancellations, leading to denials of registrations, grants of protection over objections, and favorable coexistence agreements.  Its defense against claims is deep, coordinated with MSK’s strong bench of trademark litigators in MSK’s IP litigation team who have been responsible for some of the most impactful rulings in the field at the edge of trademark law. 

Licensing and Other Transactions

For those seeking to generate brand value through partnerships with others, MSK provides guidance on a wide variety of trademark-related transactions. This includes collaborating with MSK’s Corporate and Entertainment Transactions teams on licensing and merchandizing, brand aspects of corporate transactions, acquisitions and sales, and recording collateralization.

In-House Partnerships for Global Brand Health

MSK lawyers also partner with clients’ business teams, helping them with trainings for in-house marketing and social teams, preparation of brand guidelines, and vetting marketing and product designs and claims. By working in-house with our clients to help train, educate, and advise on best practices and the legal requirements for trademark protection, we ensure our clients maintain the strength of their distinct marks and are prepared to adjust their trademark protection when markets change.

representative matters

• Trademark prosecution and advisory counsel to major and highly visible companies in music, motion pictures, books, traditional and digital media, sports, fitness, physical and video games, esports, digital assets, social media, advertising, travel, ecommerce, technology, fintech, real estate, fashion and luxury goods, food and beverage, cosmetics, and other consumer goods industries.
• Conducted 50-mark global clearance and international filing programs for major hospitality chain division in a rebrand.
• Engaged as outside counsel for sports brands organization in anti-counterfeiting cases.
• Presented trademark, copyright, publicity, labeling, and branding educational programs for dozens if large, in-house teams.
• Won opposition against competitor seeking to sell add-on product; procured ruling that client’s mark was very strong.
• Defeated opposition against world champion sports team over “claw” logo.
• 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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