Resources designed to help counsel identify and manage the acquisition, protection, licensing and enforcement of trademarks and other brand assets.
A company’s brands are often among its most valuable assets, as they:
Well-protected brands can give companies a significant competitive advantage in the marketplace and create important goodwill with their customers. Central to developing and maintaining strong, protected brands is the proper acquisition, maintenance, exploitation and enforcement of a company’s trademarks and other intellectual property.
The internet age and the expanding use of social media as a way to advertise and promote brands present enormous business opportunities but also significant challenges for protecting brands from misuse and reputational damage, including through acts of company employees and third parties. Given the business and competitive importance of brands, companies should maintain a robust program covering all facets of brand protection, including:
Selecting, clearing, registering, and maintaining strong and protectable trademarks.
Ensuring proper use of company trademarks by employees and third parties.
Implementing appropriate policies and procedures to protect company brands in the social media context.
Developing programs to protect company trademarks against counterfeiting and gray market activities.
Identifying and taking appropriate action against third parties that infringe or misuse a company’s trademarks and other intellectual property, including cyberpiracy and other online abuse.
Managing internet domain names.
Licensing company trademarks with appropriate quality control and other protections.
Failing to take appropriate actions in these areas can have serious adverse consequences for a company, including:
Selecting inherently weak brand names with a narrow scope of trademark protection, or no scope of protection at all.
Adopting trademarks that violate a third party’s rights and, as a result, exposing the company to injunctive relief and monetary damages.
Limiting available legal rights and remedies where another party misuses the company’s intellectual property.
Loss of trademark rights, allowing competitors to adopt the marks for their own goods or services.
Loss of control over brand reputation.
The Brand Protection Toolkit provides a number of continuously maintained resources designed to help counsel identify and manage the acquisition, protection, licensing, and enforcement of trademarks and other brand assets.
Creating and Acquiring Brands
Proper Brand Use
Practice Note, Trademark Infringement and Dilution Claims, Remedies and Defenses (
Trademark Litigation: Likelihood of Confusion Tests by Circuit Chart (
Creating an Effective Trademark Anti-counterfeiting Program Checklist (
Practice Note, Drafting an Effective Trademark Cease and Desist Letter (
Standard Document, Trademark Infringement Cease and Desist Letter (
Trademark Litigation: Pre-suit Considerations Checklist (
Trademark Litigation: Drafting the Complaint Checklist (
Trademark Laws: State Q&A Tool (
Practice Note, Trademark Litigation: Drafting the Complaint (
Standard Document, Trademark Litigation: Complaint (Federal) (
Practice Note, TTAB Oppositions and Cancellations: Grounds and Defenses (
Practice Note, TTAB Oppositions and Cancellations: Practice and Procedure (
Standard Document, TTAB: Notice of Opposition (Likelihood of Confusion and Dilution) (
Standard Document, TTAB: Petition for Cancellation (Likelihood of Confusion and Dilution) (
Practice Note, Digital Millennium Copyright Act (DMCA): Safe Harbors for Online Service Providers (
Standard Document, DMCA Complaint (Takedown Notice) (
Standard Document, Domain Names: UDRP Complaint (
Monitoring and Responding to Third Party Use of Social Media: Best Practices Checklist (
Standard Document, Domain Name Transfer Agreement (
Standard Document, Trademark Acquisition Agreement (
Standard Document, Trademark Assignment Agreement (Short-form) (
Standard Document, Trademark Coexistence Agreement (
Standard Document, Trademark Consent Agreement (
Practice Note, Trademark Due Diligence in Mergers and Acquisitions (
Trademark Due Diligence in Mergers and Acquisitions Checklist (
Practice Note, Trademark License Agreements (
Standard Document, Trademark License Agreement (Pro-Licensor) (
Standard Document, Trademark License Agreement (Pro-Licensee) (
Trademark License Checklist (
Expert Q&A: Trademark Licensing and Accidental Franchises (
Standard Clauses, Transitional Trademark License Clauses (Pro-buyer) (
Standard Document, Trademark Security Agreement (Short-form) (
Standard Document, Release of Trademark Security Interest (Short-form) (
Standard Clauses, Transitional Trademark License Clauses (Pro-seller) (
IP in Business Transactions, Country Q&A Tool (