Trademark

McGrath North’s trademark attorneys have more than 30 years combined experience protecting brand names and other intellectual property.

Our trademark clients operate in a wide range of fields, and include internationally known companies, start-up companies, and individuals.

Because McGrath North’s trademark attorneys manage a substantial portfolio of trademark applications and registrations throughout the world, we can provide you and your organization with the expertise needed to quickly and efficiently make informed decisions in regard to your trademark and brand strategy. Our trademark attorneys assist clients in the selection, use, availability, registration and enforcement of trademarks and their rights, both in the U.S. and abroad. Client trademarks and business names are quickly searched for availability and, through electronic filing with the United States Patent and Trademark Office, federal trademark applications can be filed on a same-day basis.

McGrath North’s intellectual property attorneys can also provide assistance with trademark, license and transfer agreements, domain name registrations, and domain name dispute resolution proceedings. Conducting thorough, in-depth, intellectual property due diligence investigations in client mergers, acquisitions and divestitures is also an important role played by McGrath North’s trademark attorneys.

In the event of litigation, McGrath North can represent you or your organization with proceedings at the U.S. Trademark Trial and Appeal Board, and in U.S. federal and state intellectual property litigation.

Representative Services:

• Manage numerous companies’ trademark portfolios, including the worldwide trademark portfolio of a global engineered products and services company whose trademark portfolio includes more than 500 trademarks spanning more than 60 countries.
• Represent multiple clients with respect to the filing of international trademark applications via the World Intellectual Property Organization via the Madrid Protocol.
• Prosecuting and defending multiple trademark opposition and cancellation proceedings in front of the USPTO’s Trademark Trial and Appeals Board.
• Successfully put together and implemented a strategy for a foreign country’s flagship air carrier to overcome several trademark refusals on the basis of their marks being deemed geographically misdescriptive.
• Conducting a trademark audit of a global multi-national company for purposes of consolidating the company’s trademark portfolio, identifying gaps in trademark protection, and identifying other intellectual property related issues.
• Represent clients’ interests in domain name dispute proceedings resulting in favorable outcomes for our clients, including cases in which we were successful in transferring domain name registrations to our clients when our client’s trademarks were registered as domain names by others.  Likewise, when our clients’ ownership of domain name registrations is threatened, we have successfully prevented the transfer of our clients’ domain name registrations to others.
• Successfully litigate and settle a trademark dispute against an out-of-state competitor who used Internet contacts to reach in-state customers of our client.
• Analyze and advise client on right of publicity issues related to the client’s on-line posting of photos taken at a promotional event hosted by a national publishing and entertainment company.