Trademark Proceedings

Few firms can match Hunton Andrews Kurth’s experience at the United States Patent and Trademark Office, before the Trademark Trial and Appeal Board and in trademark litigation in federal courts throughout the country. We work closely with clients to represent their interests at every stage of trademark disputes—prelitigation analysis, cease and desist, preliminary injunctions and temporary restraining orders, conducting coordinated raids with law enforcement, discovery and summary judgment practice, mediation, trial and appeal. 

Our team is responsible for enforcing and protecting some of the best-recognized brands in the world, including two of the 10 most valuable trademarks in the world (according to Forbes magazine), and we rely upon strong trademark policing efforts to afford clients ongoing protection. Such efforts frequently enable clients to put a halt to third-party encroachment before it leads to expensive and time-consuming litigation. When disputes rise to the level of litigation, we represent clients before the federal courts and the Trademark Trial and Appeal Board. Apart from handling litigations, we also effectively manage smaller proceedings before the Trademark Trial and Appeal Board and cases for individual trademark owners. Our team has had significant success, handling hundreds of opposition and cancellation proceedings each year. This track record of success across venues has been noted by our clients and by leading industry publications and rankings organizations, including the Benchmark Guide to America’s Leading Litigators, Chambers USA and The Legal 500. Most recently, we were acknowledged as “Client Service All-Stars” in a client survey by BTI Consulting.

Policing and Enforcement
Companies and brands can lose profits, goodwill and even their trademark rights without effective enforcement efforts in place. We proactively monitor our clients’ trademark rights, using watching services and investigators where appropriate, and act swiftly and aggressively to assert ownership. Our goal is to resolve trademark disputes efficiently, using demand letters, response letters and negotiation to reach positive business solutions. When trademark issues cannot be resolved in this manner, we leverage our experience and resources to represent client interests in a variety of forums.

Litigation
Seasoned, creative litigators represent trademark plaintiffs and defendants in federal courts throughout the country, in cases involving federal and state claims of trademark infringement and dilution, trade dress infringement, unfair competition and cybersquatting. We have extensive experience handling all phases of federal trademark litigation, successfully obtaining and defending against interlocutory injunctions and TROs, winning cases on summary judgment, representing clients in bench and jury trials, and appealing decisions to the courts of appeals and the United States Supreme Court. 

Decades of practice and a robust, full-service intellectual property practice promote favorable outcomes, and we work closely with clients to determine the strategy that aligns most closely with their legal and strategic goals. Through the careful use of survey, marketing and damages experts, deploying litigation technology and staying ahead of the game in discovery and motions practice, we position our clients for success regardless of venue.

Opposition and Cancellation Proceedings
Recent changes to Trademark Trial and Appeal Board practices have resulted in proceedings that are more similar to civil litigation than ever before. Our team, with decades of civil litigation and opposition and cancellation experience, is well-positioned to respond to the new rules, including the significant changes to required disclosures. We have represented clients in thousands of opposition and cancellation proceedings before the US Patent and Trademark Office’s Trademark Trial and Appeal Board for decades, obtaining favorable decisions and settlements while managing the process to increase efficiency and reduce costs. 

Our skill at handling opposition proceedings at the TTAB and assisting petitioners in cancellation proceedings at the PTO has allowed opposers and petitioners to succeed on the merits of such oppositions and cancellations, using motions practice, discovery and other tactics to achieve favorable results—including default judgments. Where appropriate, we look for ways to achieve early and favorable settlements, including settlement agreements, coexistence agreements, concurrent use agreements, express abandonments of applications and registrations and amendments to identifications of goods or services in applications and registrations.