At Goodwin Procter, our trademark attorneys are experts at maximizing the branding opportunities presented by today’s technologies and global economy, while minimizing the corresponding risks. Our trademark attorneys provide clients with the tools to promote and protect their most valuable asset – their good name.

The Proactive Approach

Goodwin Procter takes a proactive approach to helping clients develop, protect and commercialize corporate identity and brand management programs in the United States and abroad. Our primary goals are to provide stability and help avoid conflict so that the value of our clients’ trademarks can continue to grow. 

We have extensive experience in domestic and foreign trademark prosecution, enforcement and protection, as well as the transactional aspects of corporate identity, brand management and trademark licensing. We approach trademark issues not merely as highly specialized intellectual problems, but with a big-picture, business-oriented focus. When providing strategic counsel, our aim is to help clients achieve their business objectives. With risks and uncertainties involved, as is common with trademark matters, we give clients a clear analysis of a matter’s relative risks and rewards. 

We take a global view of the trademark assets of our clients. In addition to screening, selecting, registering and enforcing domestic trademarks, we work with an established network of foreign attorneys and agents to develop and maintain the worldwide trademark portfolios of our clients. Prepared to meet the challenges of the rapidly changing international trademark landscape, we stand ready to counsel clients with respect to the recent expansion of the European Community trademark system, and on the filing of international trademark applications upon the accession by the United States to the Madrid Protocol in 2003. 

We represent a wide variety of clients, in the United States and abroad, in fields ranging from high technology and banking to consumer products and restaurant services, assisting them in all aspects of trademark strategy, development, protection and enforcement.  

By understanding our clients’ overall business needs and objectives, and with a comprehensive, multidisciplinary and creative approach, we help clients establish innovative corporate identity and brand management programs. In addition to pure trademark counseling, our trademark and unfair competition lawyers advise and represent clients in connection with advertising and labeling compliance matters, and in the broader transactional context of trademark licensing, co-branding agreements and similar joint ventures. In general corporate transactions, our trademark attorneys work as members of the transactional team to structure and document mergers, acquisitions and financing deals, and to conduct and analyze trademark due diligence work. This experience enables our team to provide effective and wide-ranging advice on trademark usage, branding and exploitation across all media. 

We also advise clients on issues pertaining to trademark usage and regulatory compliance, such as the use of trademarks on product labels, Internet web sites and advertising in all media. We work with clients in diverse industries and specialized fields to ensure that their branding and other public communications are consistent with the disparate rules governing their industries – from the securities laws to the nutritional information requirements set out by the FDA. 

The Dispute Resolution and Litigation Experience

In addition to structuring a proactive protection regime, Goodwin’s trademark litigation and dispute resolution specialists have the knowledge and experience necessary to defend or prosecute our clients’ trademark rights when disputes are unavoidable. 

We represent clients in all aspects of trademark litigation, regulatory compliance and dispute resolution. We work diligently to achieve favorable resolutions without resorting to expensive litigation, but if necessary to best protect our clients’ interests, we pursue litigation aggressively. Our IP Litigation Practice includes prosecuting and defending infringement, unfair competition, misappropriation, dilution, cybersquatting, advertising liability and other proceedings in the state and federal courts and before the U.S. Patent & Trademark Office. 

We also counsel and represent clients before ICANN-authorized dispute resolution providers in domain name disputes under the Uniform Dispute Resolution Policy, and before the National Advertising Division of the Better Business Bureaus and the Federal Trade Commission in advertising disputes. 

The Integration Advantage

One significant advantage Goodwin Procter clients receive from our representation is the integrated approach with which we address each of our clients’ trademark issues. Our corporate specialists work hand in hand with our litigation specialists from the outset to put together a comprehensive trademark and brand development and protection strategy that is best suited to each client’s needs. In this way, we are able to help our clients visualize the future, realize their branding goals and maximize the value of their corporate identity.

Contacts: Stephen G. Charkoudian