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Davis+Gilbert LLP

From our base in New York, we represent a diverse range of clients across the country and around the world.

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Trademark and Brand Management

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  • Overview
  • Content Creation and Use
  • Entertainment and Sports
  • Intellectual Property Litigation
  • Technology Creation and Protection
  • Trademark and Brand Management

A company’s trademarks are arguably its most valuable assets, and the vigilant protection of those assets is critical to its success. Our attorneys take a strategic approach to the clearance, prosecution and enforcement of trademarks across all markets and media, both domestic and international.

Working at the intersection of advertising law and intellectual property law, we help organizations of all kinds to create, protect and defend their marks. Our long and well-known history of service to the advertising and marketing communities gives us a unique perspective on the use and monetization of trademarks, and our clients benefit from that perspective in their branding efforts.

Clearance and Prosecution

Our clients — many on marketing’s cutting edge — often bring us into branding projects at the ideation stage. Based on the results of our clearance searches, we guide them through each step in the trademark prosecution process, creating and implementing cost-effective strategies for how — and in which jurisdictions — their marks should be registered.

Global Portfolio Management

We manage trademark portfolios for companies of all sizes, from small start-ups with one or two marks to global giants with thousands. We make sure clients have appropriate, cost-effective coverage in the required jurisdictions, and we work closely with trusted law firms in other countries to help execute filings, prosecute and defend opposition and cancellation proceedings, and attend to other maintenance and enforcement matters across all international brands.

Licensing and Monetization

Our clients like to keep us involved throughout the life of a brand, and they seek our advice in extending its value through licensing arrangements, product placements, sponsorship agreements and co-branded collaborations. We regularly represent both licensors and licensees, and our knowledge of both sides of the table adds value in the negotiation and drafting of agreements and payment strategies.

Brand Protection Programs

Threats to a successful brand are many and varied, and our clients trust us to develop and manage tailored programs for effectively countering them. We routinely engage a wide range of service providers that track trademark filings, monitor the marketplace, comb the internet and scour social media platforms, alerting us to possible trademark infringements and other illicit brand usage. We then take the appropriate steps to remedy the situation, whether through cease-and-desist letters, online takedowns, administrative proceedings or courtroom litigation.

Representative Experience

  • Protected trademarks of a worldwide provider of transportation and logistics services and won over $6 million in statutory damages and attorneys' fees in litigation concerning defendants’ willful infringement. Overcame resistance from the magistrate judge and prevailed on summary judgment, giving our client relief sooner. Also obtained injunctive relief to end defendants' infringement and for our client to use in deterring other infringers.
  • Overseeing a global project for a U.S. professional sports players organization. Handling clearance, prosecution, maintenance and enforcement in the use and registration of the name and logo in the United States and in over 80 other countries in multiple merchandise and service categories.

  • Representing a top university in trademark matters, handling clearance, prosecution, maintenance and enforcement in the use and registration of the university's name in the U.S. and across the globe. For cross border issues, we retain and coordinate with local trademark counsel in each jurisdiction to take the necessary action locally.

  • Working with a leading restaurant chain to protect its key brands internationally, including several that are considered descriptive and often difficult to protect, and trying to accomplish this without litigation except as a last resort.

  • Represented the Estate of a late rock icon and the company that owns the intellectual property rights globally involving the rock icon, in a matter concerning the unauthorized use of personas and trademarks in connection with a line of sneakers. Rights to these elements/branding elements are valuable assets of the Estate, which regularly licenses them in connection with clothing, including sneakers. Resolved this matter on confidential terms with a favorable outcome for our clients, without the matter escalating into major litigation.

  • Managing the U.S. and international trademark portfolio for a leading video game and e-sports company. Overseeing clearance, prosecution, maintenance and contentious matters, including a large volume of opposition and cancellation proceedings.

Key Contacts

  • Media item displaying Brooke Erdos Singer

    Brooke Erdos Singer

    Partner

    Area Of Focus

    • Intellectual Property + Media
    • Advertising + Marketing
    212 468 4940
    bsinger@dglaw.com
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Meet The Team

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  • Overview
  • Content Creation and Use
  • Entertainment and Sports
  • Intellectual Property Litigation
  • Technology Creation and Protection
  • Trademark and Brand Management

Insights + Events

  • Publication Reuters Legal News | The Case of Fruity Pebbles: ‘Stone-Age’ Use Does Not Guarantee Trademark Protection in Colors

    April 26, 2024

  • Event International Trademark Association (INTA) | Green Trademarks and Sustainability Marketing—Trends, Enforcement, Watchouts, Risk Mitigation, and Opportunities

    February 7, 2024

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