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Trademark and Branding

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Baker Donelson's Trademark and Branding attorneys understand that global brand protection, achieved in partnership with your company's strategists, begins with strategic counseling to audit and identify core brands that further your company's core purpose; establish short- and long-term business goals; and construct a strategy that leverages and protects core brands as proprietary trademarks across social media, web-based business platforms and traditional business settings.

Featured Experience

Advised recording artists and songwriters regarding entertainment/music industry agreements and protection of intellectual property, including negotiation of publishing agreements, 360 deals, drafting and negotiating synchronization licenses for use of songs in films, drafting recording agreements for Grammy® Award winning artists and counseling artists on obtaining commercial success.

Obtained favorable copyright rulings in the Sixth Circuit Court of Appeals on two issues of first impression which are of extreme importance to the fashion and clothing industries - the test for conceptual separability of graphic designs from clothing and the deference that courts should pay to registration decisions of the Copyright Office.

Guided U.S. and overseas clients in medical devices, construction materials, franchising and cosmetics through the registration process for protection of trademarks at the state, federal and international levels.

Practice Overview

Overview

Baker Donelson's Trademark and Branding attorneys understand that global brand protection, achieved in partnership with your company's strategists, begins with strategic counseling to audit and identify core brands that further your company's core purpose; establish short- and long-term business goals; and construct a strategy that leverages and protects core brands as proprietary trademarks across social media, web-based business platforms and traditional business settings. We also provide clients with access to a free portal providing real-time access to trademark portfolio details as well as generating trademark deadline and trademark status reports.

We advance, maintain and protect this strategy by:

  • Filing for registration, maintenance and renewal of trademarks in the United States and abroad, including negotiating Trademark Office actions on applications, and appealing to the Trademark Trial and Appeal Board or courts as necessary
  • Registering trademarks with Customs in the United States and worldwide to prevent importation of infringing goods
  • Working with our network of foreign associates around the world to register, maintain, renew and enforce trademark rights globally
  • Licensing and franchising
  • Performing trademark clearance searches and opinions for new marketing, and investigating the trademark rights of others
  • Performing due diligence for mergers and acquisitions of trademarks
  • Docketing trademarks for maintenance and deadline compliance
  • Providing trademark watch services and 2(d) citation watch services that identify threats in competitors' activities
Representative Matters
  • Assisted a large pharmaceutical company in combating extensive, targeted international registrations of the client's trademarks by a foreign corporation, successfully opposing and/or obtaining assignments of all of the pirate marks, totaling roughly 100.

    (2015)
  • Acts as outside intellectual property counsel to and has extensive experience advising clients in the garment, fashion and wearable technology industries.

  • Manage and enforce large international trademark portfolios for celebrities and clients in the fashion industry.

  • Advised recording artists and songwriters regarding entertainment/music industry agreements and protection of intellectual property, including negotiation of publishing agreements, 360 deals, drafting and negotiating synchronization licenses for use of songs in films, drafting recording agreements for Grammy® Award winning artists and counseling artists on obtaining commercial success.

  • Successfully prosecuted dozens of copyright and trademark applications.

  • Advised client in negotiation and purchase of large trademark portfolio from competitor.

  • Trademark and copyright counsel for clients in the agriculture-chemical industry.

  • Outside trademark counsel for multiple clients in the restaurant services industry and food preparation industry, including providing brand advice and strategy for growth.

  • Global trademark counsel for Avis Budget Group, Inc.

  • Advises recording artist on distribution agreements and copyright protection of songs and performances.

  • Advised U.S. companies on the protection and monetization of copyright assets.

  • Designed and implemented strategies for establishing protectable trademark and trade dress rights in marks requiring secondary meaning.

  • Represented client and performed extensive due diligence in the acquisition of large patent and trademark portfolios.

  • Obtained favorable copyright rulings in the Sixth Circuit Court of Appeals on two issues of first impression which are of extreme importance to the fashion and clothing industries - the test for conceptual separability of graphic designs from clothing and the deference that courts should pay to registration decisions of the Copyright Office.

  • Manage and enforce large trademark portfolios for multiple healthcare providers.

  • Guided U.S. and overseas clients in medical devices, construction materials, franchising and cosmetics through the registration process for protection of trademarks at the state, federal and international levels.

  • Prosecutes multi-country trademark applications through the World Intellectual Property Organization and the Madrid System.

  • Advised multi-national company on trademark and copyright issues regarding online presence and warranty agreements for new product.

  • Trademark and copyright counsel for multiple start-ups and app developers.

They are an exceptional group and their lawyers are very talented.

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