Overview

Successful companies rely on the power of their trademarks and brands to communicate the quality and distinctiveness of their products and services. Trademarks are often some of the most valuable assets of a company. 

Our trademark team diligently and creatively help our clients throughout the life of a mark – from selection, clearance, prosecution and maintenance to portfolio management, trademark audits, licensing, watch services, disputes and litigation.  Our trademark team does not simply provide rote registration services.  Instead, we work with our clients to articulate their business goals, ensuring that each trademark asset serves those goals. 

Trademarks, Branding, Social Media and Advertising

Brand Development: Brand development is a crucial task for most businesses, from the biggest brand owners to athletes, influencers and other emerging brand owners. We help guide our clients in brand development to help them optimize their brand for more differentiation, alignment and impact.  We then work with them to protect that brand offensively and defensively.

Trademark and Trade Dress Counseling and Prosecution: We offer cost-effective and forward-looking strategies for our clients’ branding processes, whether the matter involves a multi-jurisdictional roll-out for a multi-national corporation or the protection of a new mark for a start-up enterprise. We have handled thousands of marks and branding situations worldwide and have nurtured a global network of foreign counsel to help our clients navigate the nuances of non-U.S. trademark and trade dress laws.

Domestic Trademarks: Before adopting a trademark, we advise clients on strategies to adopt strong marks that are protectable and registerable. Our counseling during the early phases of trademark development helps avoid costly conflicts or enforcement problems down the road.  Once our client selects a mark, we conduct availability searches and render clear and practical opinions regarding registration.  We carefully evaluate each search request to ascertain the goods and services to search, the type of search to conduct, and whether other resources are needed.  We investigate relevant marks and names to determine if they are in use and, if so, the nature and extent of any rights their owners may possess.  Our extensive litigation experience allows us to provide realistic opinions on a mark’s availability, as well as practical recommendations on using and registering the mark to avoid or minimize potential problems.  During prosecution, if we are met with refusals from the trademark office, we provide practical advice for the best and most efficient way to respond.

International Trademarks: As with U.S. prosecution, we do not treat foreign trademark filings as routine administrative matters but as extensions of our clients’ business goals. Thus, we look at the nature of the mark, the U.S. application, U.S. or foreign search results, and potential disputes, and discuss the use plans for the mark with the client to understand the progression of the mark’s rollout.  From this, we develop appropriate foreign filing strategies, often using a stage-gate or zone-of-interest sequential plan, for filing the mark in international jurisdictions.  For over 30 years, we have nurtured a network of trademark lawyers and agents around the world to assist our clients with foreign trademark filings.  We have extensive experience with international clearance projects and present search results in organized and streamlined formats that are easy to understand, contain concise summaries and include specific advice on recommended actions.

Social Media and Advertising Properties 

Social Media and Sponsorships: We are well versed in the advertising and intellectual property (IP) issues as they relate to social media platforms including the user agreements of various platforms and emerging platforms. We are intimately familiar with viral marketing, including use of user-generated content and Federal Trade Commission (FTC) guidelines for endorsements, sponsored content, the use of influencers and testimonials; native advertising; and rules and regulations promulgated by the sports governing bodies regarding the use of athletes, venue “flash” advertising and related attempts at unauthorized association.

Promotions, Sweepstakes and Contests: We also advise clients with respect to the legal requirements of promotions, sweepstakes and contests. We prepare official rules and promotion details that comply with local, state and federal law and ensure compliance with social media platform rules.  We also advise clients regarding compliance with state registration and bonding requirements.  We review print, radio, television, direct mail and internet advertising to confirm which rule disclosures may be required.  We regularly work with promotion/sweepstakes/contest vendors engaged to assist clients with the administration and management of a particular promotion.

Non-Fungible Tokens (NFTs) and the Metaverse  

Our IP lawyers work with clients to help them obtain and protect their crypto properties like NFTs for brand control, increased revenue, brand awareness and enhancing trust and authenticity for use, g., in the metaverse. We help clients obtain NFT trademarks that represent digital media, virtual goods, digital collectibles and other crypto-assets that can be bought, sold, exchanged and transacted using blockchain technology.  For example, we help our clients review their existing trademarks and, if needed, apply for additional trademarks for digital assets, crypto-assets and virtual goods authenticated by NFTs.  We also help our clients navigate the use and policing of their brands in the metaverse as it grows and matures to provide increasingly immersive experiences for more and more people. 

Trademark-Related Transactions

Due Diligence: We regularly assist clients with IP due diligence tasks when they are looking to invest in or acquire certain businesses to determine the relative value of the IP assets and to assess risk.  Trademarks are often a focus of this analysis especially when there are agreements that affect a target’s rights in the marks.

Agreements: Our comprehensive trademark services include agreement work related to trademarks such as licenses, co-branding agreements, sponsorship agreements, and naming rights agreements.  Our attorneys have extensive commercial experience, which we draw upon to counsel clients in audits, acquisitions, sales and securitization transactions.  Importantly, our IP lawyers understand tax, corporate, litigation, employment and franchise implications and are aware of the many “hidden” IP issues that may arise in modern business scenarios.

Franchises and Trademarks: When you franchise your business, you grant a specific license to your franchises, allowing them to use your trademarks. Licensing and providing for use of your trademark is a complex issue that our knowledge and experience in intellectual property, franchising, and licensing make our team uniquely suited to help you. 

Trademark Trial and Appeal Board (TTAB) Proceedings and Litigation

TTAB Proceedings: TTAB rules and procedures in trademark opposition and cancellation proceedings are complex legal matters that require the attention of sophisticated attorneys. Vorys attorneys have years of practicing in the forum.  We carefully consider the claims and defenses and the relevant evidence in view of our client’s business goals and formulate our strategy to best achieve those goals, whether by settlement or trying the case. 

Trademark and Domain Name Litigation: Vorys has had success at the federal and state level defending and enforcing our clients’ trademark rights. Whether we are helping with a multi-million dollar dispute or assisting one of our entrepreneurial clients, we tailor our litigation strategy to maximize the outcome.  Our litigation practice covers all types of trademark infringement and dilution cases involving trademarks, service marks, trade dress, product configuration, trade names and domain names disputes under ICANN’s Uniform Dispute Resolution Policy (UDRP).  Because of the pervasive nature and extent of cybersquatting and infringement activity on the internet, we have advised clients on developing domain name registration strategies to help avoid or minimize costly enforcement work.  We also help clients manage and set priorities for enforcement efforts by developing specific guidelines and strategies.  We have significant experience in obtaining the transfer of infringing domain names from cybersquatters through litigation under the Anti-Cybersquatting Consumer Protection Act (ACPA) and by informally tapping domain name industry channels.  We tailor our ACPA approach to the facts, and we seek quick, inexpensive solutions for our clients.  Our attorneys have also successfully defended against ACPA claims when parties claiming rights have over-reached

Gray-Market Goods and Counterfeits: We handle matters involving piracy and counterfeiting, trade dress, deceptive trade practices, customs registration and UDRP arbitrations. We regularly appear in courts across the U.S. and have successfully obtained emergency injunctive relief for our clients, including ex parte seizures, temporary restraining orders and preliminary injunctions.  Our international network allows us to implement global brand protection programs quickly and effectively.  We have a team that can assist with referring matters to government authorities in appropriate cases where violations of clients’ brand, trade secrets and IP run afoul of criminal statutes.

Unfair Competition and False Advertising Litigation: Vorys represents plaintiffs and defendants in unfair competition and false advertising litigation.  We help our clients navigate the complexities of such litigation and seek to maintain a business’ reputation without unnecessary spend.  We have experience handling numerous disputes before the National Advertising Division of the Better Business Bureau (NAD), the National Advertising Review Board (NARB) and other tribunals.

eCommerce and Distribution Control Management

Counterfeiting and gray market goods are growing at an alarming rate, due at least in part to the increasing predominance of on-line marketplaces.  This results in industry losses of billions of dollars annually.  Our IP team regularly works with Vorys eControl, a practice which is entirely dedicated to helping manufacturers and brand owners protect and grow their brand in the age of global and online marketplaces in an efficient, effective and legally compliant manner.

We regularly appear in courts across the U.S. and have successfully obtained emergency injunctive relief for our clients, including ex parte seizures, temporary restraining orders and preliminary injunctions.

We help our clients use forums and procedures developed by online market places, such as Amazon’s Utility and Design Patent Neutral Evaluation Processes, to remove offending products listed by bad actors or infringers to protect our clients’ brands and IP rights.


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