Between increasing globalization of businesses and the instant access to online information, brand equity and protection in both a company's home country and abroad has become critical to ensuring market access and position. Applying our vast experience in both domestic and international matters, McKenna Long & Aldridge (MLA) works closely with clients to help develop, protect, manage, commercialize and enforce their valuable trademarks, service marks, designs, copyrights, and domain names within the U.S. and abroad.
We help clients develop national and global trademark filing, maintenance, and protection strategies that apply to each client’s unique set of business circumstances, and apply this personalized approach in clear and prompt communication.
MLA counsels clients on all aspects of trademark prosecution—from helping assess availability of marks, to the application filing process and beyond. Our trademark prosecution capabilities include:
- Trademark clearance: Searching and advising on availability and use of trademarks; rendering opinions on brand extension;
- Trademark applications: Providing counsel on the application process and prosecute applications to register trademarks in the U.S. and worldwide, as well as prosecution of all maintenance matters and renewal of existing registrations;
- Monitoring: Policing the marketplace to prevent infringement of our clients’ trademark rights; using third-party watch services and independent research to identify infringers; and
- Anticounterfeiting: Coordinating with U.S. Customs to help clients minimize the trafficking of counterfeit goods.
Our attorneys represent plaintiffs and defendants in trademark disputes in U.S. and state courts, and before the U.S. Trademark Trial and Appeal Board. Our trademark enforcement experience includes:
- Cease-and-desist activities: Assisting clients to stop infringement, including in social media contexts;
- Trademark oppositions and cancellations: Representing clients in connection with trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board;
- Domain name arbitrations and seizures: Resolving Internet domain disputes before various ICANN providers including the World Intellectual Property Organization (WIPO) and the National Arbitration Forum;
- Litigation before the courts: Representing clients in registration disputes before the Trademark Trial and Appeal Board and in trademark infringement cases before the U.S. district courts, state courts, and appellate courts; and
- Customs seizures: Protecting client interests before U.S. Customs.
MLA counsels companies across a wide array of industries on trademark transactions including advising on selection and use of trademarks, design marks/patents, and famous brands and names. Our transaction experience includes:
- Transaction negotiations: Negotiating and drafting licensing and assignment agreements
- Due diligence: Assessing the client's objectives, goals of all parties involved, targeted assets, and all aspects of the prospective transaction and counseling the client based on the conclusions
- Preparing trademark usage guidelines: Authoring formal guidelines for use of the trademark by the client as well as any licensed third parties
- Clearances and Right to Use Opinions: Preparing clearance documents enabling third parties to use a trademark and authoring opinions on the right to use trademarks
- Development of branding strategies: Counseling clients on the use of their trademarks and how to best leverage their trademarks
MLA also advises clients in connection with rights of publicity, unfair competition, copyright and false advertising claims.
- January 25, 2013
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- March 30, 2012Following its decision in Bilski, on March 20, 2012, a unanimous (9-0) Supreme Court handed down its decision in Mayo v. Prometheus-the Court’s second opinion on patentable subject matter in less than two years. Prometheus is the sole and exclusive licensee of U.S. Patent Nos. 6,355,623 and 6,680,302, which claim methods for determining the optimal dosage of thiopurine drugs used to treat immune-mediated gastrointestinal disorders, and marketed a PROMETHEUS Thiopurine Metabolites test that used the technology covered by the patents-in-suit.
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