Dow Lohnes intellectual property attorneys specialize in clearing, securing and protecting intellectual property rights for clients who are leaders in their industries and for whom intellectual property rights and assets are core to the success of their businesses. We routinely handle all issues relating to the creation and use of intellectual property, including all aspects of domestic and international trademark clearance prosecution, licensing and litigation.
Trademark Clearance and Prosecution
Dow Lohnes attorneys provide full-service capabilities in determining the availability of marks and obtaining federal, state and international registrations for trademarks and service marks. We offer clients customized searching options ranging from preliminary to comprehensive searches of trademarks, service marks, designs and domain names – all designed to meet each client’s specific goals and needs. We also have extensive experience in filing and prosecuting applications to register trademarks, service marks, designs and slogans at the state and federal level and in prosecuting and defending opposition and cancellation proceedings at the Patent and Trademark Office before the Trademark Trial and Appeal Board. For clients who market their goods and services outside the United States, Dow Lohnes is experienced at obtaining international trademark protection under various treaties based on United States trademark registrations and by working with an extensive network of attorneys throughout the world to file and prosecute international and multi-jurisdictional trademark applications, including EU and Madrid Protocol applications. Dow Lohnes attorneys also regularly assist clients in policing their marks, including reviewing Trademark Office Gazette and subscription watching services, and in maintaining large trademark portfolios through docketing and maintenance services.
A key aspect of the intellectual property services Dow Lohnes attorneys provide is assisting our clients in licensing their marks, names, likenesses and other intellectual property rights. Given our strong client base, which includes large media and entertainment companies, as well as celebrities and athletes, Dow Lohnes attorneys have extensive experience working on a wide variety of licensing agreements that sweep across distribution platforms, cover sponsorship and endorsement arrangements, and include a variety of products and services. In working on these types of arrangements, we provide our clients with guidance on how to protect their intellectual property assets, as well as how to exploit and derive value from them.
Enforcement and Litigation
Dow Lohnes attorneys use a broad range of approaches and techniques, including demand letters, Trademark Office proceedings, litigation and alternative dispute resolution proceedings, to assist our clients in enforcing their trademark rights. We handle litigation involving the unauthorized use of trademarks and trade dress in packaging, advertising, and promotions, as well as dilution, unfair competition, false advertising and cybersquatting claims under the Lanham Act.
Trademarks and the Internet
With the development of the Internet and the growth of e-commerce, new issues constantly arise regarding the application of trademark law to the use of marks on the Internet. Dow Lohnes attorneys are extremely experienced in advising clients and bringing or defending claims involving use of trademarks on the Internet and have frequently lectured and written on these cutting-edge legal issues. Our attorneys have brought scores of claims against the bad faith use and registration of domain names under the Uniform Domain Name Dispute Resolution Policy and the AntiCybersquatting Consumer Protection Act. We also routinely advise clients on other common issues faced by e-commerce businesses, such as whether the sale or use of trademarks to generate sponsored advertising on Internet search engines is actionable, whether use of a trademark on the Internet is sufficient to subject the user to the jurisdiction of courts throughout the United States and abroad and whether use of a mark on the Internet is sufficient to create nationwide rights in the mark.
- Representation of major media clients, including Cox, Comcast, Gannett, Washington Post Newsweek Interactive, Allbritton Communications, Belo and Insight Communications, in connection with the clearance, registration, maintenance, and enforcement of their trademark portfolios.
- Representation of clients from a broad array of other industries, including AutoTrader.com, Lands’ End, Fandango, Plaxo, The US. Conference of Mayors, The National Aquarium, Inc., Online News Association, Embraer Brasileira de Aeronautica SA, BAC Florida Bank and Magellan Health Services, in connection with the clearance, registration, maintenance, and enforcement of their trademarks.
- Representation of Hasbro, Inc. in connection with its formation of a 50/50 joint venture with Discovery Communications to form a children and family cable television network in the U.S. and on related agreements.
- Representation of Harpo, Inc. and Oprah Winfrey in connection with the formation of a 50/50 joint venture with Discovery Communications to form a cable television network, OWN: The Oprah Winfrey Network, and on related agreements.
- Assisted client in licensing its local television news slogans and taglines to other television station groups for use across the United States.
- Representation of Meredith Corporation in licensing its flagship BETTER HOMES AND GARDENS brand for use on home and garden products.
- Representation of Sprint in its title sponsorship of the NASCAR Sprint Cup Series and naming rights sponsorship of the Sprint Center.
- Assisting celebrity and athlete clients in licensing their names and likenesses for use with branded products and services, including negotiating an appearance and licensing arrangement between our client Jacksonville Jaguar’s running back Maurice Jones-Drew and Sirius XM Radio for a Fantasy Football radio program hosted by Jones-Drew.
- Representation of AutoTrader.com in connection with its online and offline sponsorships arrangements with various professional sports teams and leagues.
- Representation of certain media clients to acquire the sports telecasting and sponsorship rights to the games of certain Major League Baseball and National Basketball Association teams.
- Representation of a variety of clients in connection with endorsements and testimonials.
- Represented a college on a successful claim against a former employee who had registered the school’s domain name in his own name and refused to transfer it to the school unless he was paid $1,000,000.
- Represented and obtained a preliminary injunction on behalf of a local bank against an international banking group that sought to open a bank with a similar name in the same city.
- Represented a national shopping center developer on a successful claim against a hotel information service that used the name of the client’s local shopping mall as part of the name for the telephone hot line.
- Represented and obtained a preliminary injunction on behalf of a cigar company against competitor that hired a family member and sought to use his name as part of a cigar brand.