Trademark

Owen, Wickersham & Erickson’s team of experienced trademark attorneys and paralegals provide exceptional service in all aspects of trademark selection, clearance, registration, maintenance, policing, and enforcement worldwide.  Additionally, the firm provides counseling and services pertaining to domain names, false advertising, unfair competition, and rights of publicity.  Our personalized services are tailored to the needs and objectives of each client with an emphasis on common sense, practical advice, and crafting personalized approaches and solutions.  Owen, Wickersham & Erickson attorneys manage substantial world-wide trademark portfolios, develop strategies for and coordinate large scale trademark enforcement and anti-counterfeiting efforts, provide expert testimony on trademark matters, conduct hundreds of clearance searches every year, litigate precedent setting trademark cases, serve in leadership positions on committees of the International Trademark Association (INTA), and served on the Trademark Review Commission that helped re-write federal trademark law.  After eighty years we are just getting started.

Areas of focus:

  • Development and maintenance of domestic and international trademark portfolios;
  • Trademark portfolio management, including maintaining a database of over 6,000 of our client’s active domestic and international registrations and applications; we deliver reports on the status of each client’s registered marks and pending applications on a pre-determined schedule or upon request;
  • Trademark watch services;
  • Client counseling and education concerning the selection, clearance, use, registration and protection of trademarks, service marks, trade dress, and designs;
  • Counseling concerning trademark availability, validity, registrability, protection, and enforcement from both offensive and defensive perspectives;
  • Analysis and advice on trade dress selection, clearance, use, registration, and protection;
  • Domain name acquisition, transfer, registration, and enforcement, including cybersquatting disputes through Uniform Dispute Resolution Policy (UDRP) arbitration proceedings;
  • Preliminary and comprehensive trademark availability clearance searching, including large volume preliminary screening searches for branding companies;
  • Preparation, filing and prosecution of domestic and international trademark, service mark, trade dress, and design applications; we work with a network of select international associates to handle application filings, oppositions, cancellations, litigation, and anti-counterfeiting activities outside of the U.S.;
  • Domestic and international administrative proceedings, including application opposition and registration cancellation proceedings;
  • Formal and informal conflict resolution;
  • Domestic and international policing and enforcement;
  • Preparation and negotiation of license agreements, assignments, and co-existence agreements;
  • Conducting trademark due diligence in connection with mergers, acquisitions, and other corporate transactions; and
  • Counseling and litigation concerning issues pertaining to unfair competition, false advertising, rights of publicity and related fields.

Representative Trademark Clients:

  • Columbus Manufacturing (COLUMBUS brand food products)
  • Cooper Companies, Inc. (global medical device compay)
    • CooperVision  (global contact lens manufacturer)
    • CooperSurgical (leading manufacturer of medical devices for women’s health care)
  • Harlan Estate (world renowned wines)
  • salesforce.com, inc.  (global leader in software-as-a-service,  cloud software and customer relationship management)
  • Sanrio Company, Ltd. (owner of the world-famous “Hello Kitty” character and brand)
  • Sierra Club (America’s largest and most influential grassroots organization devoted to the environment)
  • University of California (California’s world renowned institution of higher learning and research)
  •  Yakima Products, Inc. (recreational equipment manufacturer)