Covington has had a dynamic trademark practice for over sixty years. Our highly experienced trademark lawyers, aided by our paralegal trademark specialists, provide clients with advice on a wide variety of trademark issues, litigate trademark cases in courts throughout the country, prosecute applications through the United States Patent and Trademark Office, and represent clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
We have advised clients, and represented them in litigation, concerning many of the cutting-edge issues spawned by the Internet, including cybersquatting, domain name monetization, phishing, pharming, use of trademarks to trigger banner and pop-up- advertising, counterfeiting, and abusive use of trademarks in metatags. We have extensive experience with the trademark aspects of corporate transactions and agreements, including due diligence review of IP portfolios, perfecting security interests in trademarks, and negotiating and drafting trademark licenses, assignments and coexistence agreements.
Our trademark practice is also international. We have designed and supervised worldwide registration, maintenance, opposition, cancellation, and policing programs for our clients in foreign countries all over the world, with assistance from our network of foreign trademark counsel in over 175 countries.
Representative Matters
- Trademark litigation on behalf of the American Automobile Association (AAA), Armani, Bacardi, Cartier, Chloé, Coty, M Financial, Montblanc, National Basketball Association (NBA), PBS, Rosie O’Donnell, Spirits International, Sun Life of Canada, Verizon, and many others.
- Trademark advisory and/or prosecution services on behalf of Armani, Bacardi, Bank of America, Borgata, Kentucky Fried Chicken (KFC), Microsoft, M Financial, National Geographic, PBS, the Smithsonian Institution, and many others.
- Trademark licensing, assignment and coexistence agreements and trademark aspects of corporate transactions on behalf of Bank of America, Bacardi, Goodyear, National Geographic, the NFL, PBS, Rosie O’Donnell, UBS Warburg, Verizon, and many others.
Accolades
Covington's intellectual property attorneys have been recognized by:
- IP Law & Business - Laurie Self named one of "Top IP People Under 45" (2008)
- WORLDLeaders IP Awards, shortlisted in the worldwide category "Excellence in Domain Name Policy Implementation" (2008)
- WORLDleaders European Awards for trademark excellence (North America/Canada) (2007).
- The Best Lawyers in America (2007-2008).
- Chambers USA's - America's Leading Business Lawyers (2006-2008).
- PLC - Life Sciences, Which Lawyer? - One attorney recognized for Intellectual Property (2005-2008).
- European Legal 500, Intellectual Property (Belgium) - “…Covington & Burling has a successful IP regulatory practice, the firm also undertakes high-end litigation in the Belgian courts” (2005).
- Legal 500 EMEA (IP Brussels) - “…the firm is also active domestically, and is a good choice for litigation, particularly with respect to the enforcement of IP rights in new media.” (2006).
- Legal 500 (Commercial Litigation EU) - “Covington & Burling is ‘business-orientated and user-friendly’. The lawyers are ‘efficient and responsive’. Areas of expertise include complex commercial contracts, IP, life sciences, product liability, wrongful denials of insurance coverage and environmental torts.” (2005).
- European Legal Experts (2006).
- PLC Global Counsel 2006 - Global Counsel Magazine for “The Life Sciences Industry Super League”- ranked number one in the world, 23 Covington lawyers were recommended as leaders in their fields, including seven lawyers in Europe.
- WORLDleaders European Awards for “Best Achievement in Protecting IP on the Internet” (2005)
- One of our Covington partners is an Elected a Fellow and Vice Chair of the Complex Litigation Committee of the American College of Trial Lawyers.
- Another partner served as a United States District Court Judge for the District of Delaware for ten years presiding over 100 trials.
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