Intellectual Property

Trademarks

We assist clients daily in developing domestic and international brand protection strategies.

Our approach is pragmatic and proactive. We assist clients to manage and mitigate risk before problems arise. Fox Rothschild is ranked among the top 40 law firms in procuring U.S. trademark registrations by IP Today and the top 25 trademark opposition filing firms by Towergate Software. Our attorneys provide comprehensive representation in the selection, searching, registration, enforcement and defense of trademarks. attorneys are well-versed and extensively experienced in those issues relating to establishing, protecting and defending trademark rights in the United States and abroad.

Services

Our practice includes:

  • Development and enforcement of trademarks, trade dress and brand identity
  • Trademark clearance, filing and prosecution
  • Creating, building and enforcing trademark portfolios
  • Drafting and negotiating trademark licenses and agreements
  • Undertaking of due diligence projects and trademark audits
  • Usage of trademarks and names on the internet and in social media
  • Representing clients in Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings to recover domain names
  • Opposition and cancellation proceedings before the U.S. Patent & Trademark Office, as well as federal court litigation
  • Coordinating trademark litigation and anti-counterfeiting investigations in the U.S. and abroad

Representative Matters

Fox attorneys have represented:

  • Lumondi, Inc., the U.S. distributor of LUMINOX brand watches, in the prosecution of trademark infringement, false designation of origin and false advertising claims, as well as violations of New York state law for trademark dilution, deceptive trade practices, and unfair competition. Secured a favorable settlement that permanently enjoined the defendants from selling infringing goods.
  • The U.S. distributor of JARLSBERG brand cheese and its corporate parent and owner of the JARLSBERG brand, in a trademark and trade dress infringement action against the owners of the BABYBEL line of cheeses.
  • The distributor of a famous Norwegian cheese brand in defending trademark and trade dress infringement claims.
  • Pandora Jewelry LLC in defending it intellectual property rights, including patents, trademarks and copyrights, during and after its successful launch of its Pandora jewelry in the United States.
  • A nationally recognized consumer goods retailer in the prosecution of trademark infringement and unfair competition claims in violation of the Lanham Act. Secured summary judgement after demonstrating that the utilization of “Sears” by the defendant created a strong likelihood of confusion.
  • A well-known U.S. software company in a trademark infringement claim in the Netherlands.
  • Merck & Co. as lead counsel in dispute over the trademark Vioxx.
  • Highline United, LLC, a U.S. distributor of designer footwear, in trademark and trade dress infringement claims by Converse, Inc. The case involved complex issues of likelihood of confusion, likelihood of dilution, and acquired distinctiveness. It went to trial before an administrative law judge who determined that Converse's claimed common law trademark was invalid. The ITC confirmed the ALJ’s findings.
  • Otto International, Inc. before the TTAB in sustaining the opposition of an infringing name and design mark.
  • A nationally recognized consumer goods retailer in prosecution of trademark infringement and unfair competition claims in violation of the Lanham Act. Prevailed on motion for a preliminary injunction, which involved issues of likelihood of confusion and trademark dilution.
  • Sears Roebuck and Co. in Sears PLC v. Sears Roebuck and Co.,an international dispute over the use and registration name and mark Sears against Sears PLC, the parent company of a U.K. department store and specialty store retailer.