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.
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.
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)