Trademark

Intangible Assets


Blank Rome has a full-service trademark prosecution practice, advising clients on trademark searches, applications, management of trademark portfolios, contested proceedings before the Trademark Trial and Appeal Board, Internet domain name disputes, foreign trademark prosecution, litigation, and licensing.  In addition to managing both domestic and international trademark portfolios, our trademark attorneys have experience in counseling and representation in connection with inter partes proceedings before the Trademark Trial and Appeal Board—as well as all U.S. courts—involving all substantive aspects of trademark, trade dress, and unfair competition law.

Trademark Searches.  Blank Rome conducts extended trademark investigations of federal, state, and common law sources to determine the probable availability and registrability of proposed trademarks, analyze the results, and provide written opinion letters for clients.

Trademark Applications.  We were ranked 34th out of 172 U.S. firms by Intellectual Property Today for the number of trademarks successfully prosecuted to issuance.  Blank Rome has extensive experience in all aspects of trademark protection, from the initial trademark search through filing and prosecution of the application, dealing with Office actions, and, if necessary, appealing such actions before the PTO’s Trademark Trial and Appeal Board, or the Court of Appeals for the Federal Circuit.

Management of Trademark Portfolios.  Blank Rome provides comprehensive counseling and maintenance services with respect to the global trademark programs and portfolios of clients, including the preparation of company trademark manuals, trademark license agreements and related distribution agreements, and assignments, as well as securing recordation of assignments and other transactions affecting title with the PTO. Counseling of clients with respect to navigating the laws relating to the importation of gray-market goods is also provided as necessary.

Contested Proceedings before the Trademark Trial and Appeal Board. Blank Rome provides counseling and representation in connection with TTAB contested proceedings for clients opposing or seeking cancellation of federal registration of  trademarks, as well as in concurrent-use proceedings or in the defense of such proceedings.

Internet Domain Name Disputes.  Blank Rome handles federal court cases and arbitration proceedings involving internet domain names on behalf of clients seeking  to prevent or terminate confusion, Web traffic diversion, loss of good will, or dilution of trademarks that cybersquatting produces.

Foreign Trademark Prosecution, Litigation, and Licensing.  We assist our clients in obtaining trademarks throughout the world, including in the European Community and Pacific Rim and in dealing with infringement suits and other trademark matters that arise in those countries.  

Select Engagements

  • Secured and protected U.S. trademark portfolio for a luxury carmaker that produces more than 790,000 cars per year. 
  • Represented a national umbrella organization with approximately 1,400 community-based members engaged in charitable fund-raising and resource allocation for human services agencies nationwide in securing and protecting its trademark portfolio in the U.S. and abroad through its subsidiary.
  • Blank Rome provides counseling, prosecution, and dispute resolution / litigation services in managing this significant international trademark portfolio to a multinational, diversified chemical company with leading positions in agricultural, industrial, and consumer markets. 
  • Blank Rome helps one of the largest independently owned food processors in the United States—producing millions of cases of frozen, canned, refrigerated, fresh, glass-packed, snack food, and freeze-dried food items—to protect its valuable intellectual property assets by registering its trademarks.

Trademark Litigation

Blank Rome’s trademark litigation lawyers represent clients in suits based on federally registered marks and also in actions based on infringement of common-law trademarks, misappropriation of trade dress, and related acts of unfair competition, such as passing-off and false advertising.  Blank Rome’s trademark attorneys have experience in counseling and representation in connection with inter partes proceedings before the Trademark Trial and Appeal Board, as well as before all U.S. courts, involving all substantive aspects of trademark, trade dress, and unfair competition law.

We have considerable experience in counseling and representing parties to litigation arising out of alleged misappropriation of trade secrets, proprietary know-how, and other categories of confidential information.  As part of our international trade practice, Blank Rome provides counseling and representation in a variety of international trade investigations and enforcement actions.

Trade Secret Litigation.  Blank Rome has gained considerable experience in counseling and representing parties to litigation arising out of alleged misappropriation of trade secrets, proprietary know-how, and other categories of confidential information.

ITC / Customs Enforcement of Trademarks.  We provide counseling and representation in a variety of international trade investigations and enforcement actions assisting clients in seeking issuance of exclusion orders from the ITC or defending actions seeking such orders in connection with allegedly infringing or gray market–imported merchandise.

Select Engagements

  • International, upscale car manufacturer, in trademark-infringement action brought by competitor involving use of designations Q5 and Q7 for SUVs.  Negotiated favorable settlement allowing manufacturer to proceed with marketing and roll-out of new line of vehicles in U.S. market.
  • Premier global financial services firm offering wealth management, investment banking, asset management, and business banking services. Assisted in protecting its trademarks from infringers and cybersquatters.
  • International, upscale car manufacturer, in numerous federal court actions in Florida and Massachusetts to protect the trademark for the world’s fastest luxury automobile.
  • Manufacturer of computer and digital music products, in a landmark ITC case where complainant was seeking relief against patent and copyright infringement of technical circuitry by imports from Taiwan and Hong Kong.  Hearings raised domestic-industry issue because of the company’s foreign manufacture of certain components.  ITC issued exclusion order against articles that infringed patent and copyrights, including components that contributorily infringed copyrights.
  • Defended six domestic importers of used hydraulic excavators in action in the ITC for alleged violation of Section 1337 of the Tariff Act seeking exclusion of alleged gray-market machines.
  • One of the nation's fastest growing financial service retailers in numerous trademark and unfair competition claims in federal court and before the Trademark Trial and Appeal Board.
  • Well known Italian sportswear, tennis, and ski apparel; footwear; and accessory designer in a federal district court action alleging deceptive trade practices, unfair competition, and violations of the federal Lanham Act, including trademark infringement, false designation of origin, and dilution.  The action settled favorably shortly after the commencement of discovery.
  • One of the largest retail chains in the country—policed trademarks and initiated numerous domain name complaints against cybersquatters resulting in the transfer of infringing domain names.
  • Successfully defended a service company specializing in providing access to healthcare and health insurance systems in a federal lawsuit and the subsequent Third Circuit Court of Appeals proceeding, alleging trademark infringement.
  • Successfully represented a leading international academic publisher in trademark matters, including litigation against a cybersquatter wrongfully using one of its URLs.