Trademark, branding, and e-commerce strategies

Overview

Your brands are key assets of your business. Effective strategies for proper protection and enforcement of your brands under U.S. and international law are imperative to enhance and maximize their value.

McDonald Hopkins’ skilled team of trademark attorneys do just that by providing clients with guidance on all aspects of trademark law, including trademark selection and clearance, brand protection and enforcement strategies, training, and global trademark portfolio management. In addition to an in-depth knowledge of trademark law, our trademark attorneys also take the time to understand your industry, your competitors, and your business goals, using their legal expertise to help you meet those objectives. With a wealth of knowledge and experience, our team manages thousands of trademarks, both domestically and internationally, including those for many well-known companies in a wide variety of competitive sectors. For many clients, our trademark and intellectual property attorneys act as in-house IP counsel, providing strategic advice and indispensable services. Our clients range from early stage startups to large global companies. We have experience providing expert advice no matter your needs or stage of development.

Our trademark team also includes skilled intellectual property litigators with significant experience handling hundreds of disputes concerning all aspects of trademark  enforcement and maintenance, including USPTO opposition and cancellation proceedings, commercial infringement lawsuits, and appeals. Our litigators ensure your legal rights are protected and that competitors are not violating them – we provide creative and cost effective solutions.

Developing brand protection strategies is important for building strength and value in your brands and minimizing risk to them, and strategic management of your U.S. and international trademark portfolio is key to doing so. Our trademark brand protection and portfolio management services include:

• Advising on selecting trademarks and providing a complete and robust trademark clearance  process.
• Preparing and filing trademark applications that provide appropriate levels of protection for the goods and services offered and identified.
• Working closely with the USPTO and trademark offices worldwide to obtain and maintain registrations, with a   strategic and cost-effective approach to filing, including foreign filings through either the Madrid system or our trusted network of foreign counsel.
• Prompt reporting and skilled handling of refusals and  office actions using tested and effective strategies to overcome difficult and complex refusals to  obtain key registrations for clients.
• Obtaining trademark ownership and use rights, including negotiating transactions, agreements, licenses, and assignments, and timely recording of ownership changes.
• Exploring your business activities, marketing materials  and plans, and web presence, so as to provide advice on best practices to protect and build value. We also regularly review and analyze your trademark use, trade dress use, and geographic footprint to  determine what needs to be protected and where.

Trademark enforcement is key to maintaining strong brands. Our brand enforcement services include:

• Monitoring for infringement through systematic review of trademark, domain name, and social media watch services.
• Stopping infringers from using your brands through a variety of enforcement mechanisms appropriate for the situation.
• Litigating trademark infringement and related issues such as unfair competition, deceptive trade practices, and tortious interference in federal and state courts nationwide.
• Handling disputes via administrative proceedings, including USPTO oppositions, cancellations, letters of protest, ex  parte expungements, and ex parte re-examinations.
• Stopping infringers from purchasing and using domain names with your trademark in them, including through UDRP actions.
• Negotiating appropriate resolutions with competitors including permanent injunctions, license agreements, coexistence agreements, consent agreements, and other agreements affecting trademark  rights.

The internet and e-commerce platforms offer unparalleled new business opportunities; the downside is that brand integrity can easily be damaged in the e-commerce world where infringement, copying, and knock-offs are ubiquitous. We can help by:

• Counseling clients on internet and e-commerce issues in retail, consumer goods and services, banking, and manufacturing. We also provide advice relating to B2B and B2C e-commerce, online and mobile application advertising, ISP issues, and the distribution and protection of, and enforcement of rights in, online and mobile content.
• Advising on website development and design, website hosting, website disclosure requirements, and website policies.
• Ensuring that your online presence is fortified with solid terms and conditions, privacy policies, retailer and distributor agreements, MAP policies, and other terms and policies.
• Handling encryption, data security, and data transfer issues, and drafting polices and agreements related to privacy and data security concerns.
• Negotiating and drafting software licensing agreements, hardware acquisition agreements, content and online service provider agreements, EULAs, drop-ship agreements and click-wrap agreements.
• Advising on use and enforcement of trademarks, brands, and content on social media platforms.
• Assisting clients with registration and enforcement of their brands with Amazon Brand Registry.
• Using take-down procedures provided on retailer and social media platforms for a cost-effective means to stop potential infringements.