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Trademarks & Domain Names

Trademarks, trade dress and domain names are the primary means by which companies achieve recognition in the marketplace for their goods and services. The goodwill of a company is inextricably tied to the strength of its brand and, as a result, a company’s trademark or trade dress is quite often its most valuable asset.  Our lawyers assist clients with all aspects of branding, ranging from adopting new trademarks, trade dress and domain names, to securing trademark registrations, to policing the marketplace, to resolving conflicts between brand owners, to exploiting the brand.

Goulston & Storrs maintains a substantial trademark prosecution practice before the U.S. Patent and Trademark Office and is currently managing and developing US and international trademark portfolios for clients in a wide range of industries. From trademark clearance searches, to trademark prosecution and proceedings before the Trademark Trial and Appeal Board, we successfully secure the strongest and broadest brand protection possible for our clients.  We also work closely with clients to develop, maintain and protect their web presence through the acquisition and protection of domain names, including counseling clients in connection with new generic top level domains (gTLD). 

One of the most critical components of trademark protection is enforcement.  Together with our IP Litigation group, the Trademark and Domain Names group represents a wide range of clients in trademark and domain name disputes, ranging from Fortune 500 companies, international retailers and famous brand owners, to start up companies, non-profits and entrepreneurs.  Representing clients in both enforcing and defending against trademark claims, our Trademark & Domain Name group has experience litigating trademark disputes in state and federal courts around the country and before the Trademark Trial and Appeal Board, as well as engaging in alternative dispute resolution processes, including proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP).  

Representative Projects and Transactions

  • Obtained summary judgment on behalf of famous sports apparel designer against claims of trademark infringement relating to the sale of sneakers associated with the athlete’s induction into the hall of fame.
  • Represented and counseled manufacturer of medical devices in asserting trade dress claims against former distributor and competitor resulting in the successful implementation of a preliminary injunction ordering the competitor to remove all infringing articles from the stream of commerce.
  • Represented several trademark owners in arbitration proceedings under the UDRP against registrants of domain names that were confusingly similar to the trademarks.
  • Represented owners of internationally famous golf course against national discount retail chain for trademark infringement.
  • Represented video game developer in successfully asserting trade dress rights in the design of its website and online game.
  • Represented iconic designer and retailer in category licensing deals and in sale and license back of its brand.
  • Represented one of the largest online retailers in the world in protecting its highly valuable brand in multi-national trademark litigations resulting in the competitor having to cease all use of the infringing brand.

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