Trademark & Advertising

The power of a mark or logo cannot be overstated.  A mark can define a company, secure market position and provide a powerful tool to communicate with consumers.  Having a mark infringed, or discovering that you are infringing another mark, can be costly and disheartening.  Effective offensive and defensive strategies are essential to secure your brand, stop infringers, mitigate risks and resolve problems.

Key Contacts

Catherine Parrish Lake Partner Salt Lake City, UT
Anne W. Glazer Partner Portland, OR
Matthew R. Wilmot Partner Portland, OR
Joshua G. Gigger Partner Salt Lake City, UT
See all contacts
Overview

We use a team approach, combining talented and experienced attorneys, paralegals, docketing professionals and assistants, to provide knowledgeable, efficient and practical service.  Our flexibility and know-how allow us to design a trademark registration, management and enforcement system to fit individual client needs. 

Our services

  • Trademark search and prosecution in the U.S. and globally
  • Portfolio management and counseling
  • Trade dress counseling and registration
  • Preparing and negotiating licenses
  • Monitoring, enforcement and protection strategies
  • Preparing and responding to cease-and-desist demands
  • Handling opposition and cancellation proceedings before the TTAB
  • Litigating infringement and false advertising cases in state and federal courts
  • Pursuing and defending domain name arbitration and litigation cases, including UDRP and ACPA
  • Customs registration and counterfeit enforcement
  • Due diligence review and negotiating sales and transitional use agreements as part of commercial transactions
Matters

We have the privilege of helping diverse companies select, register and protect their brands.  Recent examples include:

  • Advised and represented a consumer products company in its global brand launch of a new logo in which we coordinated and managed trademark clearance and registration in over 75 jurisdictions.
  • Acted as trademark counsel in the reorganization of a multinational company that involved transferring to a new holding company a worldwide trademark portfolio of registrations in over 30 jurisdictions.
  • Successfully defended the principal brand name and domain name of a nationally known online education company through a declaratory judgment action in federal district court.
  • Advised a Chinese company and coordinated trademark filings in 14 jurisdictions for a worldwide launch of its lighting brand.
  • Process and review trademark infringement claims for a mid-sized e-commerce platform.
  • Assist startup franchisor to secure trademark rights in the U.S., Canada and Mexico.
  • Successfully defended a health care company in federal court against a genericness attack on one of its best-known marks.
Team

Our trademark team manages and tracks more than 6,000 trademarks registered in over 114 countries and 10 states.  We work with large and small clients across a range of industries, including: 

  • Consumer products
  • Traditional and renewable energy
  • Consumer software
  • Business software
  • Computer games
  • Electronics
  • Retail
  • Health care
  • Medical devices
  • Pharmaceuticals
  • Dietary supplements
  • Restaurants and hotels
  • Wine, beer and spirits
  • Agricultural and food products
  • Educational services
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