Trademark & Brand

Featured Publication:

The Price of Fame: Tiffany Settles 8-Year Lawsuit With Costco Over Use of Company Name in Ring Displays [Total Retail]

Edward Weisz and Keren Goldberger co-authored an article about how the Second Circuit Court of Appeals recently made clear that Tiffany’s 73 trademarks — many registered in connection with jewelry — will not protect it against others using “Tiffany” when that term has become commonly used to describe a particular six-prong diamond ring setting.

More

Trademarks and branding are about building a unique marketplace identity as much as they are about securing enforceable intellectual property rights. All trademarks are informed by the law but in service of a client’s core character and mission.

Cozen O’Connor’s nationally recognized trademark practice is full service and global. Our attorneys advise on every aspect of the trademark and branding process, from clearance and registration to licensing and enforcement, and regularly operate in jurisdictions around the world. We represent major clients operating in diverse industries, including Aramark Corporation, Beachbody, Celgene Corporation, Comcast-Spectacor, Endo Pharmaceuticals, Incyte Corporation, The Wine Advocate, Utz Quality Foods, and the maker of Sweet’N Low.

Prosecution & Counselling

Cozen O’Connor registers thousands of federal trademarks each year and is ranked among the most prolific filers of successful trademarks by the U.S. Patent and Trademark Office. We also handle state trademark registration, U.S. Customs and Border Protection registration, and trademark procurement in foreign jurisdictions. The firm has significant in-house resources dedicated to clearance and registrability as well as a lot of practical knowledge about what works and what doesn’t.

Every client is unique, so our trademark attorneys design tailored protection strategies that maximize value and limit risk. We advise on internal protocols, licensing and distribution agreements, marketplace monitoring, counterfeiting prevention, and transactional due diligence.

Disputes & Litigation

Disputes over trademarks and brand are a frequent occurrence, and companies must be prepared to respond quickly and decisively. Lex Machina recently named Cozen O’Connor among the best law firms for trademark litigation — and one of the only firms in the Top 20 as both plaintiff and defense counsel.

Cozen O’Connor’s trademark attorneys have deep knowledge of the unique legal and procedural aspects of trademark litigation. They regularly represent clients in ex parte and inter partes proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, as well as in trademark litigation in federal courts and before government and administrative venues around the world. The firm’s trademark attorneys also have significant commercial litigation experience and routinely handle complex commercial litigation cases, including breach of contract, that have a trademark component.

Services

  • Advise on the availability and registrability of trademarks
  • Prosecute trademark applications around the world
  • Counsel on internet domain names, social media, and online branding
  • Assist clients with domestic and international portfolio management
  • Develop trademark protocols to support permitted usage
  • Negotiate licensing, transfer, and other complex IP-sharing agreements
  • Provide anti-counterfeiting counseling and enforcement
  • Represent clients in emergency TRO and preliminary injunction proceedings
  • Handle litigation in federal, state, and appellate courts, before the U.S. Patent and Trademark Office and Trademark Trial and Appeal Board (TTAB), and under the Uniform Domain Name Dispute Resolution Policy (UDRP)

Experience

Publications

The Price of Fame: Tiffany Settles 8-Year Lawsuit With Costco Over Use of Company Name in Ring Displays [Total Retail]

August 31, 2021

Edward Weisz and Keren Goldberger co-authored an article about how the Second Circuit Court of Appeals recently made clear that Tiffany’s 73 trademarks — many registered in connection with jewelry — will not protect it against others using “Tiffany” when that term has become commonly used to describe a particular six-prong diamond ring setting.

Do Green Certification Marks Lead to Greener Consumption? [The Legal Intelligencer]

March 24, 2021

Julie Dostal authored an article on the use of green trademarks and whether it has an impact on consumers’ purchasing habits and effectively promotes more sustainable, green consumption.

While the world is on pause, it’s a good time to review your social media compliance policy

April 20, 2020

Danielle Garno and Brianne Polito contributed an article to Agility PR Solutions encouraging businesses to review their social media advertising strategies and compliance programs to ensure that they are updated, specifically tailored to the business, and that their marketing teams as well as influencers understand what is required under the FTC regulations.

Controlled Substances, CBD and COVID-19 [Alert]

April 10, 2020

Ashley Kessler and Jon Gale discuss recent developments on the state and federal levels that impact the cannabis industry.

Stairway to Heaven: End of the Inverse Ratio Rule Apophthegm [Daily Business Review]

March 16, 2020

Samuel Lewis wrote an article about the U.S. Court of Appeals for the Ninth Circuit's decision on a intellectual property case involving the Led Zeppelin song "Stairway to Heaven."

Kylie Jenner's 'Stormi' TM Battle Evinces A Celebrity Catch-22 [Law360]

March 13, 2020

Edward Weisz and Brianne Polito co-authored an article about Kylie Jenner filing various trademarks for her daughter.

4 Reasons Software Copyright Lawsuits Are On The Rise [Law360]

December 13, 2019

Hugh Marbury and Armeen Mistry wrote about why there has been an increase in software copyright lawsuits.

First to File, First to Amend or First to Use Hemp Products [Alert]

October 14, 2019

Ashley Kessler reviews trademark applicant process for hemp and hemp-derived CBD products and how date of “first use anywhere” and “date of first use in commerce” could impact who gets the trademark.

Right of Publicity and Fair Use: Sure to Raise Eyebrows [New York Law Journal]

August 23, 2019

Edward Weisz and Brianne Polito wrote about companies using the name of a celebrity as a tie-in to a product seeking to connote a celebrity's characteristic or feature.

CBD Is Still Not Free (To Register): An Update on Trademark Registration Guidelines for Cannabis Products [Alert]

May 06, 2019

The USPTO issued an examination guide on May 2, 2019 regarding the examination of trademarks for cannabis and cannabis-related goods and services after the enactment of the 2018 Farm Bill. The Guide answers some questions about how applications are going to be reviewed going forward, and how current pending applications are going to be reviewed, but also opens up a whole host of additional questions and uncertainties.

Guidance on Enforcing and Defending Intellectual Property Rights on Amazon [New York Law Journal]

March 22, 2019

Edward Weisz and Alanna Miller wrote about Amazon's process for managing infringement and counterfeit allegations.

The Federal Circuit Redefines Secondary Meaning and Infringement for Product Trade Dress in Converse [Alert]

November 19, 2018

Camille M. Miller and Darren S. Mogil discuss the Federal Circuit opinion that finds registered trade dress carries a presumption of secondary meaning only prospectively from the date of registration and product design trade dress can only infringe if it is substantially similar to the protected trade dress.

Fox News v. TVEyes: Implementing Internal Policies to More Likely Remain Within the Realm of Fair Use [Intellectual Property Alert]

March 01, 2018

Hugh Marbury and Alanna Miller discuss Fox News v. TVEyes and how the Second Circuit is setting up case law that differentiates similar technologies within different industries.

Copyright Monkey Business [Digital Photo Pro]

July 18, 2017

Samuel Lewis, a member of Cozen O'Connor's Intellectual Property department, discusses a recent photo copyright case on Digital Photo Pro.

Defending Your Copyright Could Cost You [Digital Photo Pro]

April 14, 2016

Samuel A. Lewis discusses how a recent court decision may impact copyright owners who send Digital Millennium Copyright Act takedown notices.

Hashtags and exclusive ownership: #Incompatible? [InsideCounsel]

September 29, 2015

Chanel L. Lattimer and Brianne Polito discuss how companies can protect the hashtags they use to market their brands.

Protect Your Brands from Counterfeit Sellers' Use of Social Media to Bolster "Fake" Credibility [Intellectual Property Today]

May 20, 2014

Camille Miller, co-chair of the Intellectual Property Department, discusses the rise in counterfeit sellers using the Internet and social media to generate web traffic and divert customers to rogue e-commerce websites to sell counterfeit goods.

Copyright Act's Application to Internet Television Broadcasts [The American Lawyer]

February 27, 2014

In an article titled "Copyright Act's Application to Internet Television Broadcasts," Stephen Miller, a member of Cozen O'Connor's Commercial Litigation Department, and Thomas Leonard, an associate in the firm's Litigation Department, discuss the U.S. Supreme Court's upcoming decision on whether Aereo's system of transmitting television programs over the Internet violates the Copyright Act. The ruling could have a seismic impact on the television industry and how Americans view television shows.

Facebook v. Typosquatters: Statutory Damages Under Anticybersquatting Consumer [Intellectual Property Alert]

May 14, 2013

Magistrate Judge Westmore recommended that the U.S. District Court for Northern California award Facebook $2.8 million in damages from typosquatters under the Anticybersquatting Consumer Protection Act (ACPA). Facebook v. Cyber2Media, Inc. et al., Case No. 4:11-cv-03619, (N.D.Ca., April 30, 2013).

IP: Supreme Court Holds That the “First Sale” Doctrine Applies to Copies of a Copyrighted Work Lawfully Made Abroad [InsideCounsel]

April 16, 2013

On March 19, in Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court, reversing the 2nd Circuit, resolving conflicting decisions from the federal appellate courts, and rejecting the solicitor general’s arguments, held that the “first sale” doctrine applies to lawful copies of a copyrighted work first sold abroad.

IP: Protecting your brands against online counterfeit sellers [Inside Counsel]

March 05, 2013

Brand owners should use a multi-pronged strategy to combat knock-off goods. Although counterfeiting is often perceived as a victimless crime, it has significant economic and reputational costs for brand owners. In 2012, U.S. Customs and Border Protection seized counterfeit goods worth $1.26 billion and shut down 697 websites involved in trafficking counterfeit goods.

In The News

More Than 205 Cozen O’Connor Attorneys Named Best Lawyers and Ones to Watch By The Best Lawyers In America

August 19, 2021

Best Lawyers selected 210 Cozen O’Connor lawyers from 23 of the firm’s nationwide offices for inclusion in the 2022 edition of The Best Lawyers in America.

WTR Global Leaders - Camille Miller

July 15, 2021

In an interview with World Trademark Review, Camille Miller discussed her career, the trademark landscape, and the firm's Intellectual Property Department.

Intellectual Property Department Recognized by World Trademark Review 2021

April 15, 2021

Cozen O'Connor’s Intellectual Property Department was recognized by World Trademark Review 1000.

YouTube’s ‘Checks’ copyright system: what lawyers think

April 09, 2021

David Sunshine was quoted in World IP Review discussing YouTube's new ‘Checks’ system.

Cozen O’Connor Recognized as a “Best Law Firm” in 25 Practice Areas Nationwide, 115 Practice Areas Regionally

November 05, 2020

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 25 practice areas nationwide and 115 practice areas regionally.

BuzzFeed’s Loss in Photo Case Affirmed by Second Circuit

August 13, 2020

Samuel Lewis was quoted in Bloomberg Law discussing copyright management information and BuzzFeed being liable under the Digital Millennium Copyright Act for altering a photographer’s credit for a picture and publishing the photo in an article without permission.

Cozen O’Connor Welcomes Miami-based Litigator Danielle N. Garno

February 24, 2020

Cozen O’Connor announced Danielle N. Garno, a seasoned litigator, who has joined the firm from Greenberg Traurig, will be a member in the firm’s Miami office. Garno will chair Cozen O'Connor’s Retail Industry Team and lead the firm’s fashion, beauty, and luxury goods practice.

Intellectual Property Department Recognized by World Trademark Review 2020

February 20, 2020

Cozen O'Connor’s Intellectual Property Department was recognized by World Trademark Review 1000.

Camille Miller Honored by Corporate LiveWire

February 10, 2020

Camille Miller was named the Corporate LiveWire IP Dispute Lawyer of the Year.

Fashion Fights Heading to the Supreme Court

January 13, 2020

Edward Weisz was quoted in Women's Wear Daily discussing trademark lawsuits involving fashion.

Cozen O’Connor Recognized As a Best Law Firm in 24 Practice Areas Nationwide, 106 Practice Areas Regionally

November 05, 2019

The U.S. News – Best Lawyers “Best Law Firms” rankings are based on a rigorous evaluation process that includes the collection of client and lawyer evaluations and peer review from leading attorneys in their field.

Four Cozen O'Connor Attorneys Named Managing Intellectual Property IP Stars

October 15, 2019

Four members of Cozen O'Connor’s Intellectual Property Group, Frank Abramonte, Thomas Fisher, James Gale, and Hugh Marbury, have all been named IP Stars by Managing Intellectual Property.

138 Cozen O’Connor Attorneys Named to the Best Lawyers in America

August 28, 2019

Best Lawyers selected 138 Cozen O’Connor lawyers from 21 of the firm’s national offices for inclusion in the 2020 edition of The Best Lawyers in America.

Why You Can’t Call It a Barcade

March 14, 2019

Camille Miller discussed with Eater her experience working with Barcade and enforcing its trademark.

Outside Counsel: Federal Trademarks Still Difficult to Obtain for Cannabis Companies

February 08, 2019

Edward Weisz discussed with Corporate Counsel how different strains of cannabis can be registered with the U.S. Patent and Trademark Office under the federal patent law which allows for patents to be places on plants.

Intellectual Property Department Recognized by World Trademark Review 2019

February 07, 2019

According to the publication, Cozen O’Connor scores a 10 out of 10 from clients.

Cozen O'Connor's Intellectual Property Department Continues to Rank Among Top Trademark Litigation Firms in the Country

October 08, 2018

Cozen O'Connor has been named among the top law firms for trademark litigation by Lex Machina in its intellectual property analytics for 2018.

Cozen O’Connor’s Western Expansion Continues as the Firm Adds Two Attorneys From Seed IP Law Group to its Seattle Office

August 21, 2018

In a move that significantly enhances its Seattle office and expands its IP practice on the west coast, Cozen O’Connor today announced two attorneys from Seed IP Law Group LLP, Frank Abramonte & Lorraine Linford, have joined its fast-growing global IP Practice.

Citigroup Requests California Dispensary Citidank Stop Infringing on Trademark

April 19, 2018

Ed Weisz, a member of Cozen O'Connor's Intellectual Property department, discussed in Cannabis Dispensary Magazine about the trademark infringement disputes of Citigroup and a California dispensary.

Intellectual Property Department Recognized by World Trademark Review

February 05, 2018

Cozen O’Connor’s Intellectual Property department was recently ranked by World Trademark Review 1000.

100 Cozen O’Connor Lawyers Named to the Best Lawyers in America

August 23, 2017

Lawyers were selected for inclusion in the 2018 edition based on a rigorous peer-review that has been developed and defined for more than 30 years.

Contacts

Camille M. Miller

Co-Chair, Intellectual Property Department

cmiller@cozen.com

(215) 665-7273

Amy F. Divino

Co-Chair, Trademark Prosecution Practice

adivino@cozen.com

(212) 883-4909

People

Awards

Cozen O’Connor Recognized as a “Best Law Firm” in 25 Practice Areas Nationwide, 115 Practice Areas Regionally

November 05, 2020

U.S. News & World Report and Best Lawyers recognized Cozen O’Connor as a “Best Law Firm” in 25 practice areas nationwide and 115 practice areas regionally.

Intellectual Property Department Recognized by World Trademark Review 2020

February 20, 2020

Cozen O'Connor’s Intellectual Property Department was recognized by World Trademark Review 1000.

Camille Miller Honored by Corporate LiveWire

February 10, 2020

Camille Miller was named the Corporate LiveWire IP Dispute Lawyer of the Year.

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