Trademark and Unfair Competition

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Trademark

We provide a full range of trademark portfolio planning services. We conduct trademark searches and advise on trademark clearance, selection, and enforcement and are known for our ability to secure, maintain, and enforce trademark rights here in the United States and internationally.

Our trademark attorneys assist clients in establishing and enhancing their profiles in the marketplace by securing trademark registrations, and by litigating trademark and unfair competition claims. We frequently aid in the development and selection of trademarks, conduct trademark searches, investigate trademark usage, and prepare clearance opinions for clients.

We have counseled clients on Internet domain name disputes and have participated in opposition and cancellation proceedings before the Trademark and Trial and Appeal Board of the U.S. Patent and Trademark Office. We have also litigated trademark counterfeiting issues. We frequently assist clients with establishing appropriate trademark usage for packaging and advertising, and negotiate and prepare trademark assignments and trademark licensing programs.

We have broad experience in trademark litigation in the federal and state courts, and extensive experience in all the important venues for protecting intellectual property rights. Internationally, we are able to coordinate opposition, cancellation, and infringement against conflicting trademark applications or registrations in nearly every jurisdiction in order to enforce our clients' trademark rights.

Unfair Competition

Unfair trade practices can include any of a number of allegations, including the misappropriation of trade secrets, false advertising, and unfair competition. Claims of unfair trade practices can arise in all areas of technology, and they often surface in conjunction with intellectual property claims of patent, trademark, and copyright infringement.

Our range of experience in all areas of intellectual property puts us in the perfect position to protect our clients' valuable assets when they are either pursuing or defending an unfair trade practices claim. Our attorneys work with clients to maximize the protection of their intellectual property and to guide them through the intricacies of unfair trade practice law when issues arise.

As part of the process of preventative counseling, we make sure that our clients have appropriate agreements and licenses in place in the event that a challenge to their assets is made. We are often asked to litigate unfair trade practice claims on behalf of our clients, and we have an outstanding record of success.

Our across-the-board intellectual property experience ensures that we are always prepared to pursue or defend claims involving our clients' intellectual assets.

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Past Event

May 16, 2013
MBHB Partner James McCarthy Is the Featured Presenter
May 7, 2013
MBHB Partner James McCarthy Is the Moderator For This Session Held at the INTA 2013 Annual Meeting
April 16, 2013
MBHB Partners Richard Carden and Kurt Rohde Are Featured Co-Presenters
January 22, 2013
Live MBHB Webinar Featuring MBHB Partners Kevin Noonan, Ph.D. and Donald Zuhn, Ph.D.
June 21, 2012
MBHB Partner Michael Baniak Is a Featured Speaker

Publications

May 20, 2013 (snippets Alert)

On May 20, 2013, new rules of practice and procedure go into effect for International Trade Commission Section 337 Investigations, 19 C.F.R. Parts 201 and 210. Many of these rule changes were made for the purposes of making technical corrections or clarifications to the rules and will have little direct impact upon a complainant or respondent’s strategy in navigating through a Section 337 Investigation. However, some of the changes to the rules, particularly those changes to the rules governing the initiation of an Investigation (§210.12), the termination of an Investigation (§210.21), and the scope of discovery (§210.18), are worthy of attention.

Spring 2013 (snippets)
On February 14, 2013, Tiffany filed a lawsuit against Costco Wholesale Corporation (“Costco”), alleging that Costco was engaging in the sale of counterfeit TIFFANY diamond engagement rings. Tiffany’s complaint against Costco alleged violations of federal and New York law, including counterfeiting, trademark infringement, dilution, unfair competition, injury to business reputation, false and deceptive business practices, and false advertising. In its defense and in support of its counterclaims, Costco mainly argued that “[t]he word Tiffany is a generic term for ring settings comprising multiple slender prongs extending upward from a base to hold a single gemstone.”  This article reviews the relative strengths/weaknesses of the main arguments presented by the parties and provides an assessment of which party is more likely to prevail based on the strength of these arguments.
Spring 2013 (snippets)
Since President Obama entered the White House in 2009, his administration has undertaken a number of steps toward stricter policing of international trade secret misappropriation. Those efforts reached a turning point early this year with the release of the “Administration Strategy on Mitigating the Theft of U.S. Trade Secrets.” At the same time, however, news reports have suggested that the Chinese government has facilitated – and even been responsible for – the misappropriation of U.S. trade secrets. As a result, the Obama Administration has ramped up efforts to protect trade secrets against Chinese misappropriation.
Fall 2012 (snippets)
What if trade secret misappropriation occurs abroad and the misappropriated trade secret is used to manufacture products that are then imported into the United States to compete with the trade secret owner’s products? Under the TianRui decision, a U.S. company doing business abroad may have recourse in the International Trade Commission (“ITC”) under section 337 of the Tariff Act of 1930 (“section 337”) to exclude the importation of products that embody a misappropriated trade secret, even when the trade secret theft occurred entirely outside of the United States and the U.S. company is not using its trade secret in its products.
Summer 2012 (snippets)

In 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) introduced the generic Top-Level Domain (gTLD) Program to implement new Top-Level Domains into the Internet’s addressing system. To help explain the gTLD Program, this article highlights three important aspects of the Program, including: 1) background information on ICANN’s new gTLD Program and the evaluation process for applicants, 2) statistics from the first round of applications in the gTLD Program, and 3) mechanisms that rights holders may use to protect themselves (which ICANN labeled “Rights Protection Mechanisms”).

Spring 2012 (snippets)
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