Attorney Referral List

Trademarks

The Trademark practice of Thelen LLP offers unparalleled service in the acquisition, maintenance, policing, and enforcement of client trademarks and related intellectual property. Our attorneys are extensively experienced in counseling clients in the areas of trademarks, unfair competition, dilution, misappropriation, false advertising, counterfeiting, parallel import, and intellectual property laws. We also have years of experience drafting and negotiating trademark license and distribution agreements and conducting intellectual property-related due diligence reviews.

Thelen's trademark attorneys are leaders in their field and regularly serve as active members of established organizations such as the International Trademark Association, the American Bar Association (IP Division), the New York Intellectual Property Association, the American Intellectual Property Law Association, and The Copyright Society. We often write articles and have been published on numerous occasions in the National Law Journal, The New York Law Journal, The Advisor, e-Commerce Law & Strategy, Corporate Intelligencer, among others.

In addition, Thelen offers educational seminars in the proper selection, use, and protection of trademarks, and creates individualized trademark use guidelines to help maximize the strength of marks. We also conduct trademark infringement analyses.

Thelen's clients include large institutions in areas such as the arts, advertising, apparel, retail, consumer products, electronics, software, gaming, entertainment, publishing, new media, telecommunications, consulting, real estate, insurance, accounting, finance, and investment banking. In addition, Thelen's Trademark practice routinely works with e-commerce ventures and other Internet-based clients, many of whom have have entrusted the Thelen's attorneys with the management of their worldwide trademark and domain name portfolios.

Attorneys in the Thelen's Trademark practice have extensive experience in assisting clients in acquiring, perfecting, and protecting interests in intellectual property rights worldwide. Thelen has sophisticated trademark searching capabilities that allow our attorneys to render analyses and advice on the availability of trademarks, as well as their correct usage and exploitation. Thelen prosecutes trademark applications on a global basis for clients with extensive portfolios, taking advantage of applicable regional treaties and alliances, as well as priorities. We have also developed an extensive, high-quality network of over 2,000 correspondent law firms in more than 160 foreign jurisdictions. With the aid of such extensive resources, Thelen develops and implements effective pre-registration strategies for clients with a view toward maximizing value and minimizing cost.

Our trademark attorneys regularly litigate claims involving trademark infringement, unfair competition, dilution, and misappropriation of trade secrets in federal and state courts, as well as in various tribunals, including the International Trade Commission. Our extensive knowledge of the law makes us an effective advocate for our clients. The attorneys in the practice also have extensive experience with handling opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board.

Thelen routinely counsels clients on the complex legal issues relating to domain name registration, maintenance, and enforcement. By combining Thelen's significant expertise in domestic and foreign trademark litigation with its technical expertise in the Internet and the domain name system (DNS), the firm has become a leader in the field of domain name enforcement and recovery. Our attorneys have successfully represented Fortune 50 companies in a wide variety of disputes against cyber-squatters, both under the Uniform Domain Name Dispute Resolution Policy, and through litigation in the courts.

Recent firm domain name victories include recovering domain names relating to a highly publicized merger involving a multinational corporation, and recovering the domain name of a leading magazine in a hotly contested case that received significant media coverage. In addition, Thelen regularly assists clients in registering domain names, managing their domain name portfolios, and developing and implementing policies and procedures concerning registration in the generic top level domains, as well as in foreign country codes.

Thelen's trademark attorneys are very familiar with the particular legal and practical requirements of license and distribution agreements in applicable jurisdictions, enabling us to draft agreements that comply with such requirements.

We regularly conduct intellectual property audits and due diligence reviews in connection with corporate mergers and acquisitions, financing transactions, divestments, initial public offerings, and reorganizations. In addition to assessing the relative value of intellectual property portfolios in legal terms, our attorneys regularly counsel clients as to the use and sharing of intellectual property by newly combined or disengaged businesses and joint ventures.