Trademark Cancellations and Oppositions, Trademark Litigation, Trademark Prosecution

The internationally recognized (2017 World Trademark Review 1000) Trademark team at Haynes and Boone successfully protects and enforces some of the world’s most famous trademarks. The 2016 edition of the World Trademark Review 1000 describes the practice group as “having great bench strength” and a “superb” collection of practitioners that “truly act as a team and complement each other’s skills very well.”

Our skilled and experienced team provides clients with a full range of services, on a global scale, relating to trademarks, including:

  • Clearance searches
  • Registration and prosecution
  • Trademark protection programs
  • Opposition and cancellation
  • Trademark litigation
  • Domain name disputes

Registration and Prosecution

Our lawyers have handled thousands of trademark registrations and prosecutions with the U.S. Patent and Trademark Office (USPTO), as well as registrations in every state and many foreign countries.

We use this extensive experience and longtime knowledge to help anticipate and minimize potential problems our clients may face in developing and selecting new marks, along with the filing of trademark applications. Our clients benefit from fewer challenges and rejections of filings, as well as the corresponding lower cost of establishing and protecting their new brands.

Our lawyers also help clients with crafting both domestic and international protection strategies, including by advising of relevant foreign trademark practices. For clients looking to establish new brands overseas, we plan, manage and conduct worldwide trademark clearance and availability searches, along with analyzing proposed marks’ eligibility for registration.

We can assist clients in profiting from their valuable brands by structuring, negotiating, drafting, and recording trademark license, merchandising, security interest, acquisition, and co-branding agreements, both in the United States and abroad. We also work with our transaction lawyers to conduct domestic and international trademark due diligence in connection with mergers and acquisitions, and we work with our litigators to handle investigations and discovery in pending or threatened IP litigation.

Cancellations and Oppositions

When a conflicting trademark is filed or when an earlier application or registration blocks a brand owner’s own application, cancellations and oppositions can be incredibly useful proceedings. Our lawyers have guided clients through hundreds of successful trademark cancellation and opposition proceedings before the Trademark Trial and Appeal Board at the USPTO.

Not only has our vast experience in this area been recognized by the World Trademark Review, which for many years has named several of our trademark lawyers to its WTR 1000, but also we are very familiar with the rules and the examiners thanks to the several years another partner spent at the USPTO as assistant commissioner for trademarks.

Trademark Litigation

Few firms can boast the depth of trademark litigation experience at Haynes and Boone. Whether our clients seek preliminary injunctive relief to protect their marks or dress from infringers, or are facing claims from a competitor trying to unfairly gain market advantage, we have the team, the skill and the track record to successfully resolve their dispute.

Our dedicated team of trademark litigators has successfully tried dozens of trademark and unfair competition cases in courts around the country, including a recent $8.5 million jury award. We regularly handle unfair competition disputes of all types, including trademark, trade dress and service mark infringement, dilution, false advertising, misrepresentation and misappropriation claims, as well as other matters involving Internet commerce, advertising, mobile applications and social media.

Our litigators, all members of our nationally recognized brand management team, work closely with our trademark prosecution attorneys to deliver the best results possible for clients, every step of the way. We handle trademark disputes in a variety of venues, including at the USPTO, in federal and state trial and appeals courts, and before arbitration panels.

Domain Name Disputes

Even before the Internet became an indispensible part of business, our lawyers have been successfully resolving domain name disputes both nationally and internationally, and acquiring currently owned domain names from squatters and competitors for our clients. We routinely litigate domain name disputes in state and federal court and obtain resolution of domain disputes before the Internet Corporation for Assigned Names and Numbers (ICANN).

Our team has extensive experience policing and enforcing trademark rights regarding domain names under the Uniform Domain-Name Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA). We have also numerous ancillary matters relating to domain names, including claims for breach of contract, fraud and pretexting.

When our clients either lack legal options for forcing a transfer or simply prefer a voluntary transfer, we often acquire currently owned domain names, through negotiation with or acquisition of a domain name owner.

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