Trademark and Brand Protection

Venable provides a one-stop shop to manage the full range of a client’s trademark needs on a global basis, from clearance and filing/prosecution, to enforcement, licensing, and beyond. Our wealth of experience in a wide array of industries and our unique management model set us apart, allowing us to provide clients with a rare combination of competitive pricing and best-in-class quality.

Clients benefit from our innovative mindset, combined with the infrastructure and reach that only a big firm like Venable can provide. Functioning uniquely like a boutique trademark firm within an Am Law 100 general-practice firm, our team is co-led by two partners who have worked together for 20 years. The firm’s other nationally ranked practices give our trademark attorneys constant exposure to a broad array of complex problems. In this way, clients get the best of both worlds: a client-focused approach on issues such as pricing, coupled with big-firm experience and strength.

Our practice is ranked among the most active, creative, and technically proficient in the United States. In addition to our current high rankings in World Trademark Review, Chambers USA, and Legal 500, Venable has for many years ranked among the top 20 law firms for trademark applications filed and registrations obtained in the United States. We have also been ranked as a Tier 1 trademark practice by US News and World Report.

Our team can provide competitive prices because we utilize a blend of attorneys, including trademark counsel, to staff projects effectively and efficiently. Our trademark counsel are non-partner-track attorneys with significant experience who are more economically priced. Each of our top-flight trademark counsel has experience at the USPTO, an in-house background, and/or years of private practice at the nation’s top trademark firms.

Trademark Focus – The Full Range of Work on a Worldwide Basis

  • Clearance/searches and brand selection advice
  • Obtaining registrations (“prosecution”) and maintaining them
  • Large portfolio management
  • Bringing and defending oppositions, cancellations, and litigation
  • Dispute settlement and mediation
  • Initiating and defending enforcement actions to avoid litigation
  • Brand protection and ecommerce platform brand enforcement
  • Licensing, assignment, corporate transactions, and due diligence
  • Trade dress and nontraditional trademarks (e.g., motion and sound marks)
  • Domain name policing and enforcement
  • Customs and license recordation
  • Counseling on all aspects of trademark law

Experience
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  • Managing the international trademark portfolio of two of the world’s leading mobile phone manufacturers, including contentious and noncontentious matters, domain name counseling and dispute resolution, and advertising review and clearance
  • Managing global trademark prosecution and enforcement, including anti-counterfeiting, for Playboy. The portfolio covers more than 10,000 marks in 190 countries
  • Managing the full range of trademark work, including portfolio management, for a global investment management firm
  • Managing the global trademark portfolio of a leading global higher-education company
  • Managing the global trademark portfolio of a $1 billion consumer robotics company
  • Managing the TIME'S UP brand in its high-profile global launch to address sexual harassment and gender inequality in the workplace
  • Providing strategic planning for worldwide protection of primary brands to a major American film and television production company
  • Representing Arianna Huffington in negotiating intellectual property aspects of the sale of The Huffington Post to AOL
  • Managing the trademark portfolio of Perdue Farms Inc., the third-largest poultry company in the United States, including contentious and noncontentious disputes, domain name counseling, and advertising review and clearance
  • Stopping a sham technology outsourcing company from using our client’s well-known Internet hosting brand on Facebook to attract victims to its business and websites
  • Obtaining a temporary restraining order and a permanent injunction to shut down an online trademark infringement in which a Ponzi-scheme operator in Iran was impersonating a hedge-fund client, in addition to $100,000 damages
  • Fending off a motion for a temporary restraining order which would have prevented a client from applying for a key new global top-level domain
  • Prevailing after a full trial on the merits and post-trial briefing before the Trademark Trial and Appeal Board, to cancel a registration for a tequila trademark on behalf of a client with earlier rights in a similar mark for rum
  • Helping guide RR Donnelley through a year-long process of rebranding itself and spinning off two public companies with new brands on a global basis
  • Representing loanDepot in the speedy resolution of an anti-cybersquatting and trademark infringement case

Recognition
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  • Recognized in Managing Intellectual Property, 2019
  • Recognized in World Trademark Review 1000 – The World's Leading Trademark Professionals, Prosecution & Strategy and Enforcement & Litigation, DC, 2012 - 2018
  • Recognized by Chambers USA, DC, 2012 – 2019
    • Intellectual Property: Trademark, Copyright and Trade Secrets (DC)
  • Named Technology Law Firm of the Year by U.S. News-Best Lawyers "Best Law Firms," 2017
  • Top 10 in obtaining U.S. trademark registrations, Intellectual Property Today, 2012 – 2015
  • Ranked among the nation's top firms, Trademarks: Non-Contentious, in Legal 500, 2014 - 2015