Trademarks and Brand Protection
Intellectual Property

Trademarks and Brand Protection

Culhane has significant experience procuring and protecting some of the world’s most recognizable brands. Our IP attorneys have developed impressive credentials in this field, from training at top-tier Am Law 100 and 200 firms to working as in-house counsel with Fortune 500 companies.

Our trademark attorneys routinely assist clients navigate the entire life cycle of a trademark, from evaluating the availability of marks to securing and maintaining their registrations.

A company’s market share becomes threatened when its product is not distinguished from the competition. Thus, a tailored protection and enforcement strategy is critical to maintaining the success of a unique product or brand.  Culhane is equipped to aggressively, yet efficiently, represent major manufacturers, retailers, franchisors, entertainment media and not-for-profit entities with respect to all aspects of their trademarks, copyrights, domain names, trade secrets, trade dress, licensing/distribution agreements, and advertising. We know your intellectual property, products and brand are your most valued assets and we are here to help you protect them.

We enforce our clients’ intellectual property rights through a variety of means, ranging from the development of a comprehensive and strategic registration process and post-issuance enforcement policy, including litigation, if necessary. Our attorneys have litigated trademark, service mark, trade dress, false advertising, unfair competition, gray market, antitrust and related issues throughout the country.  Culhane’s attorneys have also had significant success enforcing clients’ rights through negotiation and diplomacy. Where litigation is necessary, however, our attorneys litigate to win—in state courts, U.S. District Courts, at the ITC, the Trademark Trial and Appeal Board, through Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings, and through mediation and arbitration.

Our attorneys have counseled and managed trademark portfolios for numerous well-known brands including for example: The Coca-Cola Company, Norfolk Southern Corporation, Gibson Guitar, Aaron’s Inc., Yum! Brands, Borders Group, NCL Ltd., Titan America LLC, and Dollar Thrifty Automotive Group.

Our attorneys provide sophisticated services in the following areas of trademark law:

  • Conducting worldwide searches and clearing marks for use and registration;
  • Preparing and filing domestic and international trademark applications;
  • Handling all aspects of trademark registration and post-registration maintenance, including specialized matters such as certification marks, membership marks, and trade dress registration;
  • Strategic portfolio management including internet brand and domain name management;
  • Developing brand guidelines and social media policies;
  • Drafting and negotiating trademark licenses and assignments to maximize portfolio revenue;
  • Policing trademark registrations and internet brand usage;
  • Oppositions, Cancellation proceedings, Ex Parte Appeals, and Concurrent Use proceedings before the Trademark Trial and Appeal Board (TTAB);
  • Negotiating co-existence and concurrent use agreements;
  • Acquiring trademarks and domain name registrations;
  • Representing clients in resolution of trademark disputes;
  • Defending clients against unwarranted trademark infringement allegations;
  • Enforcing trademark rights, including taking action against violators of the Federal Anti-Cybersquatting Consumer Protection Act.

Representative Trademark Engagements

  • Preparing opinions of counsel regarding the worldwide availability of use and registration of select trademarks for The Coca-Cola Company;
  • Trademark prosecution and portfolio management for Gibson Guitar, Aaron’s Inc., and Norfolk Southern Company;
  • Advising a multi-million dollar corporation on trademark strategy, including the acquisition of new trademarks and ongoing portfolio management;
  • Representing a national restaurant franchisor in a contract dispute involving trademark ownership and use claims;
  • Defending several national retail chains in related trademark infringement and counterfeiting cases brought by a high-end shampoo manufacturer.
  • Trademark Trial and Appeal Board proceedings, see, Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., Cancellation No. 92050879 (T.T.A.B. July 2, 2013) (representing the Petitioner where Board held in a precedential decision that, under Cold War Museum, Petitioner met its ultimate burden of proving that the mark had not acquired the requisite distinctiveness to sustain the registration);
  • Lead IP counsel representing AT&T in negotiating an Affinity Credit Card Program Agreement;
  • Successfully combatted cybersquatters, obtaining favorable results for clients using ICANN proceedings and federal lawsuits under the Federal Anti-Cybersquatting Protection Act, see, e.g. Aaron Investment Company v. Mankin, 1:09-CV-1195 (N.D. GA).