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Acquiring Trademark Rights for Branding Campaign
Client's Business Objective:
Our client, a systems networking company, wanted to launch its new branding campaign along with its new slogan.
The Challenge:
The day before the kickoff of this $250,000 advertising campaign, the client discovered that another company was using its desired tagline in another part of the country and had registered the mark for protection.
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What We Did:
Some very quick research revealed that the competing company was using a mark that was owned by our client. We successfully approached the competitor and negotiated a royalty-free cross license.
Results:
The client was able to go forward with its branding campaign within 24 hours and obtained permanent rights to use its desired marks.
Key Takeaways:
When you have a critical interruption in the execution of your marketing plan, you can often benefit from the assistance of experienced outside counsel who can discover weaknesses in your competitor’s position and hidden value in your existing assets.
International Trademarks
Client's Business Objective:
The client, a consumer products company with global operations, sought comprehensive protection for its trademarks on numerous existing and future product lines.
The Challenge:
With potential markets for the client’s existing and future products in more than 100 countries, the time involved in screening and procuring effective counsel for foreign registration in every market could delay commercial development plans and the cost of immediate and comprehensive protection could be unrealistic.
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What We Did:
We executed a staged introduction of global trademark registrations. We quickly and cost-effectively procured protections in multiple countries with just one filing for the European Union and one filing under the Madrid Protocol. Then we conducted a cost-benefit analysis to determine filing priorities for individual countries. Last, we registered the most commercially valuable marks in the most significant markets for the client, using a well-established network of foreign counsel who had been quality-tested in prior transactions.
Results:
The client was able to roll out and protect its trademarks for relevant desired product lines in the foreign markets of greatest opportunity within a year and followed through with trademark protections and commercial expansion in other countries soon thereafter. We were able to save the client a substantial sum on due diligence and attorneys’ fees by utilizing our network of highly qualified foreign counsel familiar with the client’s industry.
Key Takeaways:
Access to and experience in dealing with a comprehensive network of foreign associates are critical to meeting business deadlines. It also pays dividends when counsel can work closely with businesspeople to align the choice of legal solutions and expenditures with the client’s objectives, budget, and desired timing.
Protecting Domain Names and Trademarks
Client's Business Objective:
The client, a U.S. medical device company, had discovered that a foreign company based in Turkey had copied its web site and was using a domain name almost identical to its own registered trademark, potentially confusing and misleading customers. The client sought to prevent the foreign company from using the domain names.
The Challenge:
The foreign company had no U.S. operations and was not subject to the jurisdiction of U.S. courts. Thus it was potentially costly and time-consuming to pursue the case through traditional litigation.
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What We Did:
Our litigation and trademark attorneys decided that the client would be best served by pursuing a remedy from the National Arbitration Forum (NAF). The NAF is one of two entities empowered to examine and resolve issues involving alleged bad faith use of established domain names worldwide pursuant to the Uniform Domain-name Dispute Resolution Policy (UDRP). We verified the identity of the party using the deceptively similar domain names, tracked it down, and summoned it to defend its use of those names before the NAF.
Results:
In fewer than 90 days, the NAF issued a decision ordering transfer of all domain name registrations and rights in controversy to our client without the need for a discovery process or formal hearing.
Key Takeaways:
When a quick and inexpensive remedy is desired, consider utilizing alternate dispute resolution avenues before entering into litigation. Attorneys with experience in executing UDRP alternative resolutions can help protect valuable company trademarks.
Trademark Disputes With Licensees
Client's Business Objective:
The client, an international apparel maker, wanted to end a contractual relationship with a troublesome distributor that was licensed to make and sell specific product lines bearing the client’s marks.
The Challenge:
The distributor was troublesome but had not committed any one act that constituted a material breach of the licensing contract.
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What We Did:
We began a program of constant monitoring and documentation of technical violations of the license agreement. The licensee received notice of its violations, including problems associated with sub-licensees and failures to promptly and consistently provide royalty-related data for review by the licensor. The licensor client then filed suit after establishing the proper predicate for license termination.
Results:
The licensee counterclaimed against the licensor, but a federal court judge demonstrated an inclination to rule in the client’s favor after hearing the arguments of both parties. This produced a favorable settlement within three weeks of the initial filing, resulting in termination of the licensee and recapture of the licensor’s rights pertinent to all product lines in question.
Key Takeaways:
Engaging experienced legal counsel early in the process of licensee or franchisee termination can help build the case and better position the company for a speedy and favorable outcome.
Trademarks and Company Acquisitions
Client's Business Objective:
The client, with successful operations in one region, sought to be acquired by a larger national company for a substantial sum.
The Challenge:
A potential suitor for the company discovered usage of the client’s marks in regions where it does not currently do business. The suitor wanted to expand the client’s business to other parts of the country but had no interest in acquiring potential lawsuits with contenders for the marks.
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What We Did:
We assessed the relative strengths of the potentially competing claims and of the business entities that might assert those claims, then developed a strategy for dealing with each potential claimant. We researched business histories and legal precedents necessary to craft demand letters and assert superior rights against the entities.
Results:
Cease and desist agreements were obtained with all potentially competing companies in less than 90 days. The client paid no money to two claimants and settled on favorable terms with a third. This allowed the acquisition to close as scheduled, with no discount or allowance for future trademark claims.
Key Takeaways:
When seeking transactional assistance involving intellectual property, look for counsel who have quickly disposed of competing claims in other similar transactions. A modest investment in maintaining valuable trademarks can pay dividends by helping to maintain the company’s market value.
