Trademarks

The scope of our brand protection practice includes a wide variety of companies, ranging from the food and beverage industry, manufacturers, retailers and service providers, to software companies and health care providers. Our large network of international contacts and law firms allows us to assist our clients with protection of their brands, not only in the United States but internationally as well. We work to protect and defend our clients’ most valuable assets - their brands - at all stages, from conception and manufacturing to marketing and sales. Our lawyers help build brand value through appropriate protection and use of trademarks. We build licensing and distribution strategies and agreements to optimize the value of a client’s brand. We offer consultation services to assist in determining where a brand needs to be protected, including state, federal, and international protections. Once a client is ready to take a brand to market, we ensure they are compliant with packaging and advertising rules and regulations. We provide watch services to assist in policing and enforcing our clients’ rights in a brand, and when necessary, we assist with litigation.

    • Experience
      • Trademark Infringement

      • Prosecution of a trademark infringement claim on behalf of an aircraft distributor against an aircraft manufacturer for misuse of our client’s trademark in the aviation field.
      • Prosecution of Lanham Act claim on behalf of a client that developed a method to clot major trauma injuries. The client’s revolutionary technology has been credited with saving lives in wars in the Middle East and in trauma accidents throughout the world.
      • Representation of a manufacturer of vertical panel saws and panel routers in a trademark infringement and false advertising action brought against a competitor that made use of the client’s model and product numbers.
      • Defense of a full-spectrum lighting company accused of unlawful trademark infringement based on the use of certain key online search words and the display of banner advertisements.
      • Defense of a trademark and trade dress infringement and dilution action, in the District of New Hampshire, brought against a client by a competing fire hydrant manufacturer
      • Represented a company at trial in a trademark ownership dispute. The plaintiff, a former business partner, brought an action based on a novel "first use" trademark ownership theory to claim an interest in a company trademark that he had previously sold. We prevailed at trial and on appeal.

    • News
      • November 1, 2013

        Robinson & Cole Receives 34 First-Tier Metropolitan Rankings and Three National Rankings in U.S. News – Best Lawyers Survey

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      • October 21, 2013

        Super Lawyers® Names 61 Robinson & Cole Attorneys to 2013 List

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      • August 16, 2013

        Robinson & Cole Receives Top Listing in Connecticut Attorney Count in Best Lawyers National Peer Review Survey

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      • June 22, 2010

        William J. Kelleher III Receives “40 Under 40” Award

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      • May 19, 2010

        Robinson & Cole Attorney Presents to Massachusetts Association of Personnel Services on Proposed Noncompetition Agreement Act

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      • May 10, 2010

        Robinson & Cole Attorney Quoted on Massachusetts Bill Aimed to Change State's Noncompete Landscape

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      • April 6, 2010

        Robinson & Cole Attorney Lectures on Noncompetition Agreements at Massachusetts Institute of Technology’s Sloan School of Management

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      • March 2, 2010

        Robinson & Cole Attorney Publishes Articles on Trade Secrets Audits and Assignability of Noncompetition Agreements

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      • January 4, 2010

        Robinson & Cole Partner Quoted on International Agreement to Bolster Intellectual Property Enforcement

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    • Publications + Presentations
    • "Federal Circuit Extends Patent Term in Certain Cases" (02/18/2014)

      "Drawing the Line Between Descriptive and Suggestive Trademarks," published in Commercial & Business Litigation, co-authored by Edward J. Heath and John M. Tanski, a newsletter of the American Bar Association's Section of Litigation (Fall 2010)

      "Can You Keep a Secret? Why Now Is the Time for a Trade Secrets Audit," published in Connections: Cambridge Chamber of Commerce Newsletter (2/2010)

      "States divided over asset purchases and non-competes," published in New England In-House, more details (1/2010)

      "The Computer Fraud and Abuse Act: An Overview and Discussion of a Recent First Circuit Case," at Boston Bar Assocation (3/11/2008)

      "Is an Employer Liable When Its Sales Employee Breaches a Noncompetition or Nonsolicitation Agreement with a Former Employer?" published in Massachusetts Continuing Legal Education (2007)

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