Trademarks

Whether you plan to launch a new product, service or business, any successful new venture often will gain value through the recognition of its name, logo, slogan, or other identifying feature, like a color, sound, or special look or packaging. Any of these can serve as a trademark. If you expect your customers to associate these distinctive features with the quality of your product, service or business, it is important to apply for a trademark registration. Choosing the right trademark involves having a distinctive look and searching thoroughly to avoid possible conflicts. 

Regardless of whether you are currently using the mark or intend to use it later, the best course of action is to apply for a trademark registration immediately. There are horror stories about marks that cannot be registered because another recently-opened business hundreds of miles away applied first. In these cases, clients who are prior users of a mark but did not apply for a registration have to initiate costly cancellation procedures to cancel a competitor’s registration. The cancellation procedure is essentially full litigation before the Patent and Trademark Office, complete with discovery and motion practice, which could have been avoided had the client filed first. We also defend our clients’ trademarks against claims of infringement brought by third parties.

Significant Representations:

• Required a private educational institution in Central Florida to change a website domain name that infringed national university’s federally registered marks.
• Successfully litigated federal lawsuit against Tampa-based pharmacy whose federally registered trademark infringed client’s prior unregistered mark.
• Represented state university to shut down unofficial alumni group who used university’s marks for personal profit.
• Defended Central Florida pool company from claims of trademark infringement by competitor whose business name had the same first word.
• Litigated federal lawsuit involving several producers of pharmacy-related software regarding use of trademarks on a website that allegedly compared and ranked multiple brands.
• Defended claims of trademark infringement brought by franchisor in Colorado regarding use of logos in connection with agencies that prepare children for careers in acting.
• Assisted franchisee of weight loss system to retain geographic territories from prior license agreements during the transition to a national franchise.
• Obtained mutually beneficial co-existence agreements to allow registration of mark for indoor trampoline arena that allegedly infringed a New York City aerobics studio’s mark.
• Defended Florida addiction rehabilitation center from claims of trademark infringement by large national organization based in California.
• Successfully defended local businessman who allegedly sold key chains that displayed the mark of a major automotive brand but were not authorized merchandise.
• Overcame governmental objections to registering a trademark for a hand-crafted rifle that had the same name as a Canadian ammunition brand.
• Registered and maintained entire trademark portfolio for major farming enterprise, including marks registered in Australia and Canada.
• Registered and maintained large trademark portfolio for national charitable organization that promotes the interests of children with special needs.
• Successfully represented furniture manufacturer to cease infringement of its registered trademark by large California furniture company.
• Successfully prosecuted service mark of established neurosurgery practice against out-of-state physician who opened competing practice in Florida under a very similar name.