Trademark Law

Frost Brown Todd (FBT) is dedicated to assisting our clients with each and every aspect of its business, including the very symbol of its goodwill:  its brand.  This dedication includes protecting, commercializing and enforcing the rights and interests of clients from the very inception of a brand or mark, to its adoption and launch, and throughout its duration. 

Our trademark attorneys are focused on practical, business-oriented advice, helping identify and safeguard intangible brand assets and creative content essential to a business and its associated goodwill, leaving a lasting impression on the marketplace.  Indeed, they form one of the region’s most experienced and respected trademark, and internet law groups as they assist with all types of trademark, unfair competition and domain name dispute matters for a client base that represents a broad spectrum of product and service industries, including, among many others: 

  • Clothing, including fashion and outerwear (The Limited).
  • Sports, including professional associations (National Association of Professional Baseball Leagues – aka Minor League Baseball) and collegiate level athletic programs (The Ohio State University, Bellarmine University).
  • Food and beverage, including restaurants (Long John Silver’s, A&W Restaurants, Cracker Barrel) and items for grocery retail (Sunny Delight Beverages Co., ACH Food Companies, and Perfetti-Van Melle).
  • Media, such as newspapers and television stations (The E.W. Scripps Company).
  • Household items, such as flatware and glassware (Oneida, Anchor Hocking) as well as furniture (DMI Furniture).
  • Automotive industry, such as automobile manufacturers (Honda) and high performance auto parts (Holley Performance).

FBT's trademark group has been recognized as one of the world's top trademark firms, making the final rankings in the fifth and sixth editions of the World Trademark Review 1000 (WTR 1000) in 2015-16.

Turning Business Goals into Reality

Our attorneys are not general business lawyers or general commercial litigators; they are seasoned professionals. They understand trademark and brand asset management and have an eye for the unseen details that can derail a product launch or erode your market share. They provide practical answers and solutions to help clients make informed business decisions.  With many years of experience maintaining and protecting large, global trademark portfolios, they have a considerable track record of superb capabilities in the following areas, which have helped to further our clients’ successes:

  • Brand development
  • Trademark clearance
  • Registration and proper use strategies
  • Trademark policing and enforcement, including on the internet
  • Trademark due diligence
  • Trademark licensing
  • Confidentiality and/or non-compete agreements
  • Advertising and packaging review
  • Internet licenses
  • Trademark litigation, covering:
    • Infringement
    • False advertising
    • Unfair competition
    • Cybersquatting
    • Dilution
    • Counterfeiting
    • Trade secrets

Scope of Services

Frost Brown Todd’s trademark attorneys have a wealth of experience in helping clients both protect their major brands and leverage them into new product and service areas. From trademark selection and clearance, to due diligence, licensing and litigation, our trademark attorneys have extensive experience in all areas. 

Brand Development, Portfolio Management, and Protection of Goodwill

Our attorneys are on the frontlines, working with brand managers to create and protect global brands.  Their practice goes well beyond just searching and filing applications.  They understand when to do a full search and when a preliminary search makes sense. They know when it is worth filing a trademark application and when there is little value added in doing so.  Simply put, they advise clients on the practical benefits and effects in each and every case before taking action, such as: 

  • Filing and prosecuting U.S. trademark applications
  • Building and maintaining foreign portfolios through an established and reliable network of foreign associates
  • Reviewing marketing materials and packaging for trademark issues

Our attorneys use this same practical approach when handling enforcement and policing efforts and have extensive experience in doing so.  Our trademark attorneys stand ready to assist in protecting, policing, and enforcing the rights associated with a business’s brand, content, and the associated goodwill, including: 

  • Policing brands on a world-wide basis through the use of watch services, customs registrations and foreign associates and investigators who coordinate raids and legal actions for infringements with local authorities
  • Prosecuting and defending proceedings before the Trademark Trial and Appeal Board
  • Investigating and litigating unfair competition trademark infringement claims
  • Handling internet-related issues, including domain name disputes and the unauthorized use of intellectual property on sites like E-Bay and YouTube

Trademark Litigation

Our experience goes well beyond portfolio maintenance and includes the enforcement of a client's trademarks worldwide, including opposition, litigation, and anti-counterfeiting measures. We combine our subject-matter knowledge and our litigation expertise with our understanding, through experience, of what in-house counsel and their clients really want, so that we can provide our clients with precisely what they need in analyzing potential litigation issues: realistic assessment of the strength of their position, and the ability to vigorously and successfully advocate that position in the best possible forum to finally resolve the dispute. We work to understand the business rationale underlying every dispute so that we can pursue the most appropriate and cost efficient means to secure a good result for the client. FBT has considerable experience in both defense and prosecution of lawsuits and related legal claims, which are often resolved outside of litigation. We pride ourselves on the fact that we obtain good results for clients without the need to force the matter to trial. these good results come about by means of co-existence agreements where practical, walk-away agreements when defending our clients from overzealous trademark owners, or the waving of the white flag by an infringer. 

Anti-counterfeiting Strategies

Third-party infringement of intellectual property often includes a subset of trademark violations known as "counterfeiting." FBT assists clients with anti-counterfeiting measures in both the U.S. and abroad, including past efforts for a world-famous cartoon brand that necessitated interaction with counsel and customs authorities in numerous countries on an almost daily basis. Today, FBT engages in ongoing anti-counterfeiting enforcement efforts for one of the world's most recognizable collegiate brands. While litigation against counterfeiters can often be a necessary means to an end, it is not always possible to know the identity of a counterfeiter. As such, we often rely upon other available remedies with counterfeit products. For example, we rely upon ex parte seizure orders for counterfeit goods where the goal is to get the product off of the street in specific venues (such as with concerts or tailgating events); educational campaigns with local or national retailers where the goal is to get the product off of the shelves; or customs deposits and trainings where the goal is to prevent the product from entering the country.

Internet Related Issues

Our attorneys are also on top of the ever shifting landscape of the internet and the myriad of issues that can plague a business and erode its goodwill.  Such issues can be found in the form of traditional cybersquatting by competitors or zealous “domainers”; a competitor’s use of metatags and embedded source code; or a third-party’s use of content as its own – all in an attempt to confuse and deceive consumers looking for legitimate sources of products and services. Our attorneys don’t just focus their internet practice on after-the-fact enforcement efforts, but on practical proactive advice and strategies to help clients avoid many of these issues. We understand that, in a field of unsettled law, a client needs decisive answers to assist their e-commerce business decisions. We work closely with clients to help them adapt their company's practices as changes occur in the law. Indeed, Frost Brown Todd is an Official Agent of the Trademark Clearinghouse, a depository established for trademark owners to help stem the tide of enforcement issues in the wake of the new gTLD era. For more information on the new gTLD era, please see our publications.

Licensing

Our attorneys have extensive experience in addressing the unique needs of brand owners when expanding their trademark portfolios. Our attorneys negotiate transactions and prepare agreements that involve the development and licensing of a trademark owner’s brand, whether nationally or globally.

Whether addressing the needs of a college athletic program, a multimedia company, a food distributor or any other type of portfolio, our lawyers can assist a brand owner in the expansion of its product lines and counsel on how to avoid the traditional but often overlooked pit-falls of naked licensing and lack of quality control.

Our attorneys can also help you navigate the intricate foreign requirements for the recordation of licenses. Often the expansion of a brand into a new territory involves new relationships with unknown licensees. Our attorneys, and their world-wide network of international counsel, are intimately familiar with the protections you will need to ensure that your trademarks and other IP rights remain protected should those new relationships sour.

Business Issues

As the acquisition and licensing of intellectual property contains many pitfalls for the untrained eye, our attorneys perform intellectual property due diligence, draft representations and warranties and negotiate other intellectual property agreements. They have also set up many intellectual property holding companies and drafted practical licenses. Their extensive practical knowledge and experience helps clients to anticipate and avoid potential problems, including costly litigation.

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