Trademark law, copyright protection, advertising regulations — let Brown Rudnick secure your intellectual property, defend it against the competition and assist you in the promotion of your business.

Our experienced trademark and IP attorneys and paralegals work with our clients to select, clear, register, protect and manage their brands and creative works at home and abroad, and to advise on compliance with marketing and advertising regulations in a wide range of industries.

We provide a full range of services in connection with brand and other rights-related IP law. Brown Rudnick advises companies on the entire life cycle of a trademark, beginning with the inception of a trademark through to branding strategies to registering trademarks and domain names and enforcing intellectual property rights. The team counsels on domestic and foreign trademark prosecution efforts and handles matters in the United States and across the European Union and the United Kingdom. This includes work in US federal courts, before the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board,  the English High Court (and appeal courts) and the UK and EU Intellectual Property Offices, as well as in domain name dispute resolution procedures. Our diverse client base spans a variety of industries — including technology, online services, pharmaceuticals, biotechnology, retail and consumer products — and ranges from startups to global corporations.

Brands serve to create and promote your business identity, and the intellectual property rights that underlie the brand can be extremely valuable and long lasting assets (provided that you continue to use, update and protect them). In particular, developing strong, distinctive trademarks that do not infringe the rights of others, and then managing, protecting and enforcing rights in those marks, is critically important. At Brown Rudnick, we strive to balance the importance of protecting trademarks with the costs of doing so, keeping our clients’ budgets and business objectives firmly in mind. Additionally, with trademark attorneys in our US and European offices, our team directly handles trademark matters in the US, the UK and the EU, and works with a tried and tested network of local trademark counsel to handle matters in other countries around the world.

The team is led by Chair Peter J. Willsey, who brings more than two decades of experience in trademark and copyright litigation, counseling and prosecution.

Our copyright and trademark lawyers support our clients through:

Trademarks

  • Selection and clearance
  • a. Assessing the distinctiveness of proposed trademarks (which can include company names or “house” marks, product and service names, taglines, logos and any other designations that function as source-identifiers);
    b. Conducting and analyzing the results of clearance searches, which enables us to advise clients regarding availability of marks for registration and potential trademark infringement risks;
    c. Assessing the availability and cost of related domain names and social media taglines;
    d. Developing brand strategy, including advice regarding the use of word marks, logos, domain names and taglines.

  • Prosecution and maintenance
  • a. Preparing and overseeing the filing of trademark applications in the US, UK, EU and around the world;
    b. Prosecuting applications through to registration and maintaining those registrations.

  • Licensing, assignments, and due diligence
  • a. Drafting and negotiating terms of trademark licenses and assignments, merchandising and franchise agreements, and recording agreements with trademark offices;
    b. Assessing trademark and domain name portfolios of target companies in corporate transactions and responding to trademark and copyright-related due diligence inquiries from other companies.

  • Disputes and enforcement
  • a. Using trademark watch services to monitor and assess trademark applications for marks arguably similar to those of our clients;
    b. Developing and implementing plans to stop others from registering confusingly similar or dilutive marks, including oppositions before the (USPTO) Trademark Trial and Appeal Board, the UKIPO and the EUIPO and before other trademark offices around the world;
    c. Litigating in courts around the world to prevent infringement and dilution of valuable trademarks including by misleading advertising;
    d. Defending against allegations of trademark infringement and the dilution and free-riding of trademarks and against claims of misleading advertising.

  • Domain names
  • a. Advising on the registration and maintenance of domain names;
    b. Handling any disputes that arise over domain names.

Copyright, Designs and Data law

  • Helping clients decide whether to apply for copyright registration in the US and design right registration in the UK and the EU;
  • Preparing and prosecuting copyright applications with the US Copyright Office and design right applications in the UKIPO and the EUIPO;
  • Asserting and defending against claims of copyright infringement and, in the UK and EU, database right infringement;
  • Advising on copyright, design right and database right protection for works in the UK and the EU.

Advertising

  • Advising on marketing and advertising regulations, standards and codes of practice using our experience to offer insight into what our clients can and cannot say in promotional materials and advertising copy;
  • Pursuing false advertising litigation in the US federal courts and before the Better Business Bureau National Advertising Division (NAD) and in the UK and EU.
Trademark, Copyright and Advertising Group Leader

Peter Willsey

PARTNER

Washington, DC

+1.202.536.1751