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, keyword 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, Atari, Bacardi, Cartier, Chloé, Coty, M Financial, MasterCard, Montblanc, National Basketball Association (NBA), PBS, Rosie O’Donnell, Spirits International, Sun Life of Canada, Verizon, Yahoo!, and many others.
- Trademark advisory and/or prosecution services on behalf of Armani, Bacardi, Bank of America, Borgata, Business Software Alliance, Daiichi Sankyo, Kentucky Fried Chicken (KFC), Microsoft, M Financial, Monteblanc, National Geographic, Newsweek, the National Football League, the National Basketball Association, PBS, Promontory Financial Group, the Smithsonian Institution, Verizon, 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:
- The National Law Journal - Recognized on the Intellectual Property Hot List (2012)
- The Best Lawyers in America (2007-2013)
- Chambers USA's - America's Leading Business Lawyers (2006-2011)
- Chambers Europe (2012)
- Legal 500 US, Trademarks: Non-Contentions (full coverage) (2011)
- Legal 500 UK, IP (2011-2012)
- Legal 500 EMEA, Intellectual Property - Belgium (2011-2013)
- 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 Practical Law Company (PLC) - Which Law Firm?, Intellectual Property, Commercial Intellectual Property (2009)
- PLC - Life Sciences, Which Lawyer? - One attorney recognized for Intellectual Property (2005-2009).
- 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.
- Two of our Covington partners are Fellows of the American College of Trial Lawyers and one was elected a Vice Chair of the Complex Litigation Committee.
- Another partner served as a United States District Court Judge for the District of Delaware for ten years presiding over 200 patent infringement cases.
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