Trademark

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In today’s competitive economic environment, in which a strong brand identity is critically important, leading businesses turn to Ropes & Gray to establish, secure and defend their trademarks – and their reputations.

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“We are very pleased with the quality of work and responsiveness of the IP group at Ropes. Their experience and attention to detail are major factors.” IP Client, Chambers USA
"Excellent across the board. They are very responsive and have a deep understanding of the law and the market. We have a very deep bench of support at Ropes & Gray." IP Client, World Trademark Review
“They had an understanding of our issues and I found the guidance excellent.” IP Client, Chambers USA

Overview

For more than a century, clients have turned to our nationally recognized trademark and copyright practice for guidance and representation.

We carefully evaluate our clients’ intellectual property assets and look for innovative ways to ensure that their marks, creative works and other materials are protected.

The attorneys in our trademark and copyright practice bring with them decades of experience and knowledge across diverse industries, including substantial experience collaborating with clients on branding strategies and management of trademark portfolios, licensing of marks, domain name issues and dispute resolution.  The depth of our trademark and copyright practice allows our attorneys to assist clients throughout the entire life cycle of the trademark from the initial portfolio development and strategy, the subsequent transactions and licensing of trademarks, and, when necessary the enforcement of trademarks, trade secrets, and copyrights through litigation.

PORTFOLIO DEVELOPMENT AND STRATEGY

Ropes & Gray has extensive experience in international trademark law and procedures as well as the development and management of complex, multinational portfolios. We guide leading brands with opinions on the availability of proposed marks and help clients develop a rights acquisition and enforcement strategy consistent with their budget and business plan. We provide best practices for global trademark clearance, registration and portfolio management, monitoring and enforcement, and assist clients by developing and implementing strategies to help build brand and market identities. We have a skilled team of paralegals with many years of experience who assist our attorneys in this effort. We complement our firm’s capabilities through the longstanding relationships we have with experienced counsel in jurisdictions around the world.   

TRANSACTIONS AND LICENSING

Our practice provides strategic guidance throughout all stages of the business cycle with the formation and financing of new ventures, the restructuring, financing, and commercial operation of established businesses, and the sale and acquisition of companies or defined assets, products, and services. Our experience is frequently leveraged in the context of due diligence and corporate transactions, including mergers, acquisitions and divestitures. We create programs for brand licensing and rights clearances, including negotiation and drafting of trademark and copyright licenses, in an effort to help clients reap the maximum benefit of their IP assets. We also assist with other commercial contracts that have an impact on brand value, including supply and distribution agreements.

LITIGATION

Our trademark, copyright and false advertising litigation attorneys have decades of experience and a sophisticated understanding of the Lanham Act, Copyright Act, Federal Trade Commission Act, Federal Food, Drug, and Cosmetic Act, and state unfair competition and false advertising laws. We have litigated matters on behalf of both plaintiffs and defendants in federal and state court and before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Our litigators are experienced in obtaining and defending against temporary restraining orders and preliminary injunctions, and well positioned to handle protracted litigation matters, including appeals. Our attorneys also handle Universal Domain Name Dispute Resolution Policy (UDRP) proceedings to protect clients’ trademarks against infringing domain names, and have litigated cybersquatting actions and disputes over search engine keyword advertising, metatags, pop-up ads, social media misuses, and other types of online piracy and infringement.

Experiences

We provide trademark and copyright services for companies in a wide range of industries, including consumer products, fashion, food and beverages, software and electronics, financial services, publishing, pharmaceuticals, and chemicals. Recent representative matters include:

  • Representing the adidas Group in the sale of its ROCKPORT shoe business to a new entity formed by New Balance and Berkshire Partners. This representation included negotiation of trademark and technology licenses from certain adidas Group entities to the purchasers.
  • Representing Bronco Wine Company, one of the largest producers of wines in the U.S. and owners of numerous well-known wine brands, including CHARLES SHAW, FOREST GLEN, SILVER CREEK and NAPA RIDGE, in worldwide brand clearance and registration, acquisition, and licensing matters. Notably, Ropes & Gray was lead counsel for Bronco in Bronco Wine Company v. California, a lawsuit challenging, on constitutional groups, a state statute retroactively restricting the use of certain geographic trademarks. The litigation included two appeals to the California Supreme Court.
  • Managing Books-A-Million, Inc.’s trademark portfolio, including trademark clearance and enforcement, and provide advice concerning general intellectual property issues, including cutting-edge trademark, copyright and social media issues facing retailers.
  • Advising TSG Consumer Partners with their portfolio management and enforcement of the TSG Consumer Partners mark. We also represent the investment arm of TSG, LLC and handle the due diligence for private equity transactions, including the company’s definitive agreement with Glanbia plc, the global performance nutrition and ingredients group, to acquire TSG’s former portfolio company thinkThin, LLC, a maker of wholesome, protein-rich foods.
  • Representing CalAtlantic Group, Inc. in connection with the merger of homebuilders Standard Pacific and The Ryland Group, which resulted in the United States’ fourth largest homebuilder by revenue. Ropes & Gray assisted with the development and clearance of the company’s new CALATLANTIC house mark and related marks and is responsible for ongoing prosecution, maintenance, and enforcement of the CALATLANTIC trademark portfolio as well as the company’s legacy STANDARD PACIFIC and RYLAND trademark portfolios.
  • Representing Motorola, Inc. against the National Basketball Association in a matter involving copyright infringement, misappropriation and violation of Section 43(a) of the Lanham Act, among other claims.
  • Advising Marquee Brands in its acquisition of BODY GLOVE, the Redondo Beach, California-based outdoor sports and surf brand. Marquee acquired the BODY GLOVE brand as well as related intellectual property assets in the transaction.
  • Assisting Luxury Brand Partners LLC with the development of personal care product brands from initial mark selection and clearance through worldwide rights acquisition, as well as worldwide management of the ORIBE, R+CO, and SMITH & CULT brands.

Awards

Our trademark and copyright group is consistently recognized by leading rankings publications as a top-tier practice. Recent accolades include:

  • World Trademark Review’s WTR1000 (2017) – Our trademark group has been ranked as a top firm in Massachusetts for trademark law and several attorneys are ranked as leaders in the United States and the United Kingdom.
  • U.S. News & World Report – Best Lawyers “Best Law Firms” (2017) – Our intellectual property group is nationally recognized in 12 categories in the United States, including highly ranked in trademark law, patent law and intellectual property litigation.
  • Chambers Global: The World’s Leading Lawyers for Business (2017) – Our intellectual property group is recognized in China, Japan, South Korea and the United States, with multiple attorneys ranked as leaders in the field in these regions.
  • Chambers Asia: Asia’s Leading Lawyers for Business (2016) – Our intellectual property group is recognized in China, Japan and South Korea, with multiple attorneys ranked as leaders in the field.