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Intellectual Property Law
Trademark
Trademark practice is divided into four distinct phases: (1) clearance
work, to determine whether a mark is available for use; (2) registration;
(3) protection, including counseling regarding preventative measures
to inhibit a mark from becoming generic, opposition and cancellation
proceedings before the Trademark Trial and Appeals Board to prevent
registration of infringing marks, and infringement litigation; and (4)
licensing.
When assisting clients in trademark development, Downey Brand attorneys
endeavor to understand the nature of the product or service and the
intended buying public. This counseling includes advising clients about
the relative strengths and weaknesses of a proposed mark and determining
if there are other similar marks already in use that may prevent use
by the client. Once the necessary clearance work is complete and it
is determined that there are no other marks of concern, our attorneys
will prepare and process applications to register the trademark with
the U.S. Patent and Trademark Office or with state authorities.
Downey Brand attorneys counsel clients on actions to be taken to prevent
marks from being infringed by others. Our attorneys also prepare cease
and desist letters and initiate or defend trademark infringement lawsuits.
The firm's experience includes:
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Maintaining over 300 federal and state trademarks and service marks
with the U.S. Patent and Trademark Office and California Secretary
of State.
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Representing a major retail chain in obtaining and enforcing approximately
70 trademarks.
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Advising retailer regarding trademark license terms incorporated
into e-commerce agreements.
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Representing clients in trademark cancellation and trademark opposition
proceedings before Trademark Trial and Appeal Board.
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Representing a financial institution in a claim of trademark infringement
against another financial institution. Case settled favorably in
client's favor, with opposing financial institution agreeing to
change name.
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Representing an apparel manufacturer in claim of trademark infringement
against recording artist and major recording studio. Case settled
in client's favor, with recording artist agreeing to change name.
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Representing a computer retail outlet franchiser in federal court
litigation against franchisee involving trademark infringement and
trade secret theft. Case resolved favorably for client.
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