Trademark Prosecution & Counseling

Overview

Companies understand the value of intellectual property in today’s marketplace, whether it be patents, trademarks, copyrights, or trade secrets. With proper protection, these assets can add significant value to a company’s bottom line. AGG’s trademark practice group specializes in providing global, comprehensive advice on all facets of the development, use and protection of trademarks and service marks domestically and abroad.  AGG attorneys manage significant trademark portfolios, which includes counseling on the development and protection of trademarks, prosecution of domestic and foreign applications to register trademarks and service marks, and intellectual property review of marketing and advertising materials. AGG also works alongside our clients on the creation and execution of monitoring and enforcement programs for the protection of trademarks, which includes watch services for trademarks and domain names across social media, marketing, advertising, and the internet, drafting cease and desist letters to infringers, prosecuting opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board, and litigating intellectual property disputes before state and federal courts.

All attorneys within AGG’s Trademark Practice are members of the International Trademark Association INTA), a global network of trademark owners, professionals and academics from more than 190 countries dedicated to the support and advancement of trademarks and related intellectual property worldwide.

Attorneys within AGG’s Trademark Practice routinely speak at conferences and in other forums on Intellectual Property topics in general, and trademark-related subjects in particular.

Additional Specialties

  • A “brand” is the essence of any business - a name, logo, tagline, term, sign, symbol, color or design that identifies a company and the products and services it offers.  A brand often reflects the personality of a company in the eyes of its customers, partners, employees and investors, and it acts to distinguish one company from another in a crowded marketplace. Finding its roots in the ancient practice of burning identifying marks into property to denote source or ownership, branding involves the development and use of “marks” (i.e. trademarks) by companies on all of their products and services to build source identification in the minds of the consuming public. Successful brand strategy and management, built around a strong portfolio of intellectual property, is the key to unlocking the value of a brand, resulting in higher sales and increased profits.Companies invest significant resources, including time, talent and capital, in developing a brand. AGG stands alongside its clients to assist with these efforts, every step of the way. From meeting with clients early and often regarding brand strategy and management, to helping our clients select strong, distinctive trademarks for use in the branding process, a talented team of AGG trademark attorneys is involved in every facet of brand strategy and management. AGG attorneys routinely advise on the creation, registration, protection and enforcement of trademarks domestically and abroad. AGG analyzes a client’s entire worldwide trademark strategy to identify cost-effective and efficient options for brand management based on a client’s specific business needs, marks, products and/or services, and key markets.As part of AGG’s management of our clients’ intellectual property portfolios, we also provide an array of brand monitoring and enforcement services to protect the brands of our clients from infringers. These services include monthly searches of the United States Patent and Trademark Office records, monitoring of brands, trademarks, and domain names across social media, marketing, advertising, and the internet, drafting cease and desist letters to infringers, prosecuting opposition and cancellation proceedings before the United States Trademark Trial and Appeal Board, and litigating intellectual property disputes before state and federal courts.
  • In today’s global marketplace, companies require international expertise for trademark and brand protection. AGG’s trademark practice is global, working on behalf of our clients in more than 100 countries worldwide. Most of AGG’s clients conduct business and own intellectual property rights worldwide or are multinational companies, and we assist in the creation, registration, protection and enforcement of trademarks abroad. AGG attorneys routinely clear and register new marks, maintain and enforce existing registrations, monitor third-party applications, record assignments, mergers, and other documents with trademark registries, record trademarks with customs offices, and manage trademark-related disputes and infringement actions throughout the world. We also advise our clients on the implications of international treaties and agreements on their trademarks such as the Paris Convention, the Trademark Law Treaty, the Nice Agreement on International Classification, and NAFTA. AGG has access to experienced foreign trademark associates in countries across the globe, and we partner with these associates to seamlessly provide international intellectual property services.
  • A variety of issues plague businesses in today’s digital world, and AGG attorneys are well-versed in protecting your intellectual property on the internet. AGG employs a number of strategies on behalf of its clients to protect businesses from defamation, copyright infringement, trademark infringement, brand dilution, counterfeit sales, and web traffic diversion in the online world. AGG offers watch services and monitoring services for our client’s trademarks and trademark portfolios, and we regularly investigate and address internet infringements of our clients’ intellectual property rights. Whether drafting cease and desist letters, filing complaints with popular online platforms such as Google, YouTube or Facebook, or instituting litigation, “we have your back” when it comes to internet protection.

Experience

  • Leading representation of global specialty vinyl manufacturer in lawsuit and TTAB cancellation proceeding brought under the Lanham Act and related state laws against unauthorized reseller Defendants who have engaged in trademark infringement and false advertising by, among other things, incorporating our client’s mark into their own federally registered mark.

  • Obtained summary judgment in defense and favor of renowned entertainer against complaint for trademark infringement in federal court, resulting in permanent injunction against plaintiffs. The district court’s decision was affirmed on appeal to the Fifth Circuit Court of Appeals (2017 WL 2954398) and the Supreme Court denied petition for a writ of certiorari.

  • Represented the management of a division of a multi-national public company in successfully acquiring the assets of the division in a “Stalking Horse” Bid in the US Bankruptcy Court in Delaware. After acquiring all of the assets, he represented the company for more than ten years in various corporate matters until he assisted the client in a stock sale of the company to a large public company.

  • Led trademark enforcement action for client in pool care products space against direct competitor. Quickly obtained favorable settlement for client, requiring competitor to cease sales of infringing goods, repackage existing inventory, recall infringing goods from marketplace, and agree to pay liquidated damages for any future infringement.

  • Led the defense and favorable resolution of global trademark infringement dispute and related opposition/cancellation proceedings brought by fashion house against personal care products manufacturer.

  • Following the filing of federal lawsuit and motion for injunctive relief, obtained successful settlement for home medical service provider on its claims for federal trademark infringement and various state law violations (including deceptive trade practices, dilution and unfair competition) against a competitor who had misappropriated client’s trademark.

  • Represented U.S. manufacturer in federal trademark infringement action against a former distributor. Obtained summary judgment on manufacturer’s trademark infringement claim, which included an award of treble damages and attorney’s fees. Successfully defeated distributor’s appeal of the district court’s summary judgment order in the United States Court of Appeals for the Eleventh Circuit and petition for writ of certiorari to the United States Supreme Court.

  • Served as co-counsel on a trade dress infringement case, wherein a client sued a rogue former franchisee who had set up a competing, copycat restaurant. The case was favorably settled in favor of our client, who received a consent judgment precluding the former franchisee from operating restaurants using our client’s trade dress.

  • Successfully sued a former distributor of a client for trade dress infringement relating to coffee packaging. The case was resolved in three days.

  • Performed copyright clearance work for nationwide quick-service restaurant chain, for use of musical works at seminars, in marketing and advertising materials, in training materials, and in special events. The clearance work included, but was not limited to, negotiation of license agreements with major public performance organizations, as well as drafting and negotiation of licenses for specific works with rights owners.

  • Advised a group of restaurant franchisee owners, allowing them to adjust the requirements of a franchisor’s program that could have exposed the franchisees to potential liability for violations of rights of privacy, as well as false claims of endorsement, affiliation or sponsorship, among other concerns. AGG assisted the client in negotiating resolution of the dispute, short of litigation.

  • Successfully sued one of the largest food companies in the nation for trademark infringement involving a line of frozen food products on behalf of a food distribution cooperative, receiving a very favorable settlement after a preliminary injunction hearing (but before the court’s decision).

  • Acted as intellectual property counsel to the host of an AM radio show.  The representation included drafting and review of a radio talent and studio use agreement, providing intellectual property advice on the development of content for the radio show, prosecution of trademark and copyright applications covering content created for the show, and drafting model and photograph releases for use with third parties appearing on the radio show.

  • Successfully defended a request for preliminary injunction brought by a major snack food manufacturer against another snack food manufacturer, alleging trade dress infringement based upon the respective companies’ product packaging.

  • Counseled client in the television industry regarding trademarks, copyrights, and brand protection.

  • Involved in proceedings before the United States Trademark Trial and Appeal Board opposing a trademark application on behalf of a restaurant franchise client. The trademark application was filed by a former franchisee, seeking to register an infringing trademark for use in a competing restaurant business.

  • Represented a consumer products company in a suit against a competitor for trademark infringement and violations of Georgia’s Deceptive Trade Practices Act and the federal Anticybersquatting Consumer Protection Act.  The United States Court of Appeals for the Eleventh Circuit affirmed an order granting summary judgment to our client.

  • Counseled American Breast Care LP, a worldwide manufacturer of post-mastectomy breast care products,  on the international protection of its intellectual property. The representation included the prosecution of applications to register trademarks in twelve foreign countries, as well as the creation and execution of monitoring and enforcement programs for the protection of intellectual property domestically and abroad.

  • Assisted client Network Services Company, Inc., a multi-national network of suppliers and distributors who provide top-quality, name-brand products to customers worldwide, with a major rebranding effort. The representation included assessment of Network’s entire trademark portfolio, the prosecution of a number of new applications to register trademarks domestically, as well as the creation and execution of monitoring and enforcement programs for the protection of Network’s intellectual property.

  • Represented U.S. manufacturer of boating equipment in federal false advertising litigation against a competitor. Obtained a preliminary injunction on behalf of client requiring the competitor to cease distribution of promotional materials, remove pages from its website, issue retraction letters to customers, and undertake corrective advertising. Negotiated a favorable settlement on behalf of client prior to trial.

  • Obtained favorable settlement for a consumer products company in its trademark and copyright infringement lawsuit against an international counterfeiter. Conducted an ex parte seizure of counterfeit goods stored at a warehouse with the assistance of U.S. Marshals.

  • Obtained favorable settlement for a marine products company in its Lanham Act lawsuit against a competitor using website Meta tags and Google AdWords infringing the company’s trademarks.

Recognition

World Trademark Review’s WTR 1000, the only standalone publication to recommend individual lawyers worldwide who work in the trademark field, recognizes Tucker Barr and Anuj Desai as leaders in this area of law.

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