Trademarks

Wilkinson Barker Knauer provides comprehensive services in clearing, registering, maintaining and policing our clients’ valuable trademarks and protecting the goodwill that they have developed in their marks. In addition, our attorneys routinely advise our clients on protecting their marks on the Internet and in social media and on related e-commerce issues.

The core members of our trademark practice group are attorneys who, respectively have over thirty years of experience in all aspects of trademark law and have represented numerous communications companies, as well as other corporate, educational, not-for-profit and individual clients who offer varied goods and services; combine many years of advising clients on trademark law with seven years of expertise at the FCC, and have developed a special expertise in working with technology companies. Group members include a former Trademark Examining Attorney with the US Patent and Trademark Office and a former in-house counsel, who combines extensive expertise and the ability to analyze problems simultaneously from the perspective of a counselor, a client and a regulator. Several associates and paralegals complete the team.

Our trademark lawyers have collectively reviewed and advised clients on thousands of trademark searches and prosecuted several thousand trademark applications in the United States. We also maintain a network of local attorneys internationally who can provide assistance on the registration of trademarks in other countries.

The expansion of the Internet over the last thirty years has brought a commensurate increase in intellectual property issues that were foreign to a brick-and-mortar economy. We are extremely experienced in providing clients with strategic advice and cost-effective solutions to deal with these problems, such as cybersquatting, metatagging, keyword advertising, jurisdictional issues arising from activity on the Internet, copyright infringement and the exponential increase in generic top level domains.

When other efforts at resolution fail, we have brought (and defended) adversarial proceedings involving trademarks and copyrights, including infringement and unfair competition litigation under federal and state law, trademark opposition and cancellation proceedings before the Trademark Trial Appeal Board, administrative remedies such as the UDRP, and take-down notices under the Digital Millennium Copyright Act (DMCA).

Our trademark lawyers also provide due diligence in corporate transactions, including identifying all trademarks and other IP to be assigned, evaluating the validity and strength of claimed rights in the IP, confirming that the chain of title is up to date, ensuring accuracy and recordation of assignment of rights in IP and negotiating the scope of representations and warranties.

The lawyers in our trademark practice are also experienced in negotiating and drafting agreements involving intellectual property rights, such as licenses, assignments and settlement and concurrent use agreements.