Throughout the trademark lifecycle, Perkins Coie attorneys regularly counsel individuals and companies of all sizes on every aspect, including the selection, clearance, use, registration, policing, and enforcement of marks. We help clients develop cost-effective trademark protection strategies domestically and internationally and have amassed extensive experience managing large and small international trademark portfolios. We work with clients to identify a worldwide trademark and IP strategy that meets their business goals and targets critical jurisdictions. We also have significant experience in transitioning trademark portfolios of all sizes to our care, without disruption to our clients’ businesses.

We regularly counsel clients on international filing strategies from initial clearance through filing, and from prosecution to registration. We are experienced in Madrid Protocol, EUTM, OAPI, and other multijurisdictional filing systems. Our vast network of foreign agents covers over 150 countries, including multiple agent relationships in most countries.

Our transactional depth includes assisting clients in the protection, development, commercialization, licensing, assignment, and sale of intellectual property rights and assets. Our attorneys counsel clients on complex and strategic legal and business matters, regularly conducting due diligence reviews and negotiation of trademark provisions related to corporate deals and financings.

Additionally, we regularly manage internet domain name, website, and social media issues. Our attorneys also counsel clients on complex and strategic legal and business matters relating to domain names.

Marshalling our extensive experience in all areas of U.S. and international trademark prosecution, counseling, enforcement and litigation, we regularly help clients enforce their valuable trademark rights and defend clients when claims of infringement and/or validity are raised against them. Our attorneys carefully consider business interests, customer impact, and media attention when developing enforcement strategies to meet our clients’ objectives. When necessary, we employ our significant experience and highly successful track record protecting our clients’ interests through the courts and administrative tribunals. We also work closely with our network of foreign agents, including our own China-based trademark team, to handle IP disputes across the globe.

Enforcement Programs

Clients rely on us to develop and implement global IP monitoring, investigation, and enforcement programs. We partner with our clients to monitor U.S. and international watch notices and develop systematic enforcement programs to reduce the risk of brand dilution and consumer confusion presented by worldwide trademark filings. When common law infringement issues arise, we detect, investigate, and address issues through deployment of an arsenal of enforcement options that includes cease and desist programs, alternative dispute resolution programs, civil litigation and criminal referrals.

Litigation & Administrative Proceedings

Perkins Coie’s breadth of experience helps clients enforce and defend their IP rights both domestically and internationally. Our significant depth includes litigating trademark, trade dress, dilution, unfair competition, false advertising, false endorsement, copyright, domain name, gray market, and anti-counterfeiting claims. This experience encompasses all phases of litigation, including ex parte seizure, temporary restraining orders, preliminary injunctions, trials, and appellate proceedings. We also work to protect our clients’ trademark portfolios through Trademark Trial and Appeal Board (TTAB) proceedings and have achieved significant favorable opinions, both on summary judgment and on final verdict.  Our clients have avoided significant litigation costs through our attorneys’ sound guidance. This has been accomplished by successfully settling dozens of opposition and cancellation proceedings on favorable terms, employing coexistence agreements, consents, license agreements, and agreements to terminate use to the situation and client goals. We have deep experience in domain name arbitrations under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and litigation under the Anti-Cybersquatting Consumer Protection Act, often employing a global approach to these unique proceedings and leveraging worldwide trademark rights to find creative resolutions.

Anti-Counterfeiting Piracy & Gray Market Goods

Our attorneys are active members of leading anti-counterfeiting organizations, including the International AntiCounterfeiting Coalition (IACC) and the International Trademark Association (INTA). We implement proactive programs to protect and strengthen our clients’ most valuable brands and copyright-protected assets from counterfeiters and improper re-importation. Our team focuses on protecting channels, identifying and enforcing against pirates through aggressive litigation, and working with customs and law enforcement officials as needed. Partnering with clients to identify intellectual property risks and problems, we address these issues at every level and execute tailored strategies and seek efficient and proportional resolutions. Using these strategies, we have obtained millions of dollars in settlements and judgments for clients, addressing an array of brand integrity issues.

We handle all aspects of copyright protection, enforcement and defense for our clients including counseling on protection strategies, registration, monetization, and enforcement. We are known for practical approaches focused on our client’s business goals, helping them appreciate the risks and benefits of their available strategies. We are experienced, adaptable, and strategic counselors and litigators who represent clients of all types and sizes in a variety of industries, and are particularly adept at managing complex and high-volume registration and enforcement programs.  

Our deep experience in a broad range of copyright cases includes a strong emphasis on the application of copyright law to new technology. In the landmark fair use case Kelly v. Arriba Soft, we successfully represented this internet search engine client, winning before the trial court and on appeal to the U.S. Court of Appeals for the Ninth Circuit. Kelly was the first case to extend the fair use doctrine to a graphic search engine’s use of images from the websites in its index. Other leading copyright cases handled by our attorneys include Nintendo v. Galoob (addressing derivative works and fixation in the video game context), Adobe v. Southern Software (involving the scope of protection for font software) and MGM v. Grokster (evaluating the efficacy of peer to peer networks).

Today’s fast-changing environment demands that retailers and brands break through the clutter to build genuine connections with consumers. How companies promote their products and services continues to evolve. We work with in-house legal and marketing teams to help ensure that their efforts are met with success as they plan and execute cutting-edge digital, broadcast, and print communications, packaging, social media, and promotions.

Our Advertising, Marketing & Promotions attorneys team with clients to navigate the layers of complicated laws and regulations in the United States and abroad, positioning them to avoid costly and damaging legal and public relations pitfalls. We regularly audit ad copy, marketing materials, websites, software apps, and labeling for false advertising, claim substantiation, regulatory compliance, intellectual property infringement, and right of privacy and publicity issues. Our attorneys draft and negotiate ad agency, co-promotion, influencer, celebrity endorsement, sponsorship, and other marketing services agreements, and advise clients on compliance with Federal Trade Commission rules and guidelines and avoidance of consumer, competitor, and regulator challenges associated with marketing campaigns. When consumer and competitor disputes—and regulator enforcement actions —arise, our litigation defense team develops strategy for protecting and defending the business.

Our clients include some of the world’s best-known brands, spanning a range of industries including retail, tech, gaming, toy, food and beverage, social media, entertainment, software, consumer product goods, and advertising brands.

Consistent with our longstanding representation of innovators, creators, and arts and entertainment platforms, we counsel a multitude of individuals, corporations and arts organizations on a wide variety of matters. Our clients include art collectors, artists, musicians, composers, choreographers, playwrights, and cartoonists.  We also represent authors, photographers, publishers, game developers, filmmakers, and others in the creative sphere. We assist creators in all aspects of protecting, exploiting, and enforcing rights in their work, and draft and negotiate entertainment-related contracts.

Corporations and individuals, including art collectors, museums, arts organizations, and estates retain us when they wish to commission, license, exhibit, distribute, and otherwise share or acquire creative works. We also regularly assist political candidates, music and AR/VR platforms, and nonprofit organizations.

Perkins Coie thrives at the intersection of entertainment, technology, and intellectual property law. We have extensive knowledge in digital media and interactive entertainment, and issues related to arts and entertainment matters involving online platforms, social media, and online services. Clients rely on our multidisciplinary experience, including intellectual property protection and enforcement, entertainment-related contracts, e-commerce, rights clearance, acquisition and management, corporate and financial transactions, blockchain technology, and contract disputes. We also expand the value of our clients’ trademarks and copyrights through licensing and merchandising arrangements.

At the heart of the internet are domain names, unique identifiers that are the fulcrum of our navigation of the web. While appearing benign, domain names come with hidden complexities and are subject to regulation, government interest, and intense policy oversight. Empowered by our extensive experience working with many of the world's most innovative technology companies, Perkins Coie understands our clients’ deep interests in these online properties as their identities in cyberspace.

Companies need an internet governance authority for two reasons. First, many companies need daily transactional help with domain names. Perkins Coie has dedicated internet governance professionals who step in and help with the right procedures, knowledge, and relationships. Second, and more long-term, companies have an interest in influencing the rules of the game. Internet policy is overseen by the Internet Corporation for Assigned Names and Numbers (ICANN), an organization that’s invisible to most, but is extremely powerful and operates with byzantine procedures and a confusing language.

Bringing to bear our significant experience with internet-related IP issues, we work with clients to develop internet governance, brand protection, registration, and enforcement strategies. These include the selection and acquisition of established generic top-level domains (TLDs), country code top-level domains (ccTLDs), the generic top-level domains (gTLDs) introduced by ICANN, social media handles, and other online assets that will provide offensive and defensive protection for their brands.

Our internet governance professionals are longstanding innovators and leaders in the internet oversight community. For more than a collective 30 years, our core team has participated in ICANN’s work, serving in various leadership roles. Our professionals have also served in founding roles of the Healthy Domains Initiative, the Domain Name Association’s ambitious program of registry and registrar self-regulation. They regularly contribute to the policy work of various trade associations and advocacy organizations.

Multinational clients in diverse industries rely on Perkins Coie for efficient solutions to their brand protection issues in Greater China. We are experienced in trademark prosecution, counseling, enforcement, and litigation. In addition, we regularly protect and enforce patents and copyrights through registration, counseling, and agreements.

Our China IP team also manages anti-counterfeiting and anti-piracy programs for large and small companies. Leading companies through IP customs and cross-border registration and enforcement, we possess extensive experience in helping global companies protect their brands in the online and offline space.

We have deep experience pursuing civil cases against providers and distributors of counterfeit and unauthorized products before the courts in Greater China. We have assisted clients in litigation before the People’s Republic of China (PRC) IP Courts, IP tribunals, and district courts throughout the PRC and before the courts in Hong Kong. Our successes before the People’s Courts in the PRC include preliminary injunctions and evidence and asset preservation orders, and our professionals have won and collected significant damages awards for clients in a wide range of industries.

We implement proactive programs to protect and strengthen companies’ most valuable brand assets, assisting with brand development, advertising support (conventional, online, and social media), and license approvals and regulatory compliance for products and services in highly regulated industries. We also represent information technology firms before the China Ministry of Industry and Information Technology and regularly advise on internet governance and cybersecurity issues.

China IP Agency

The Perkins Coie Intellectual Property Agency (Beijing) Co., Ltd. supports our IP practice, with offices in Beijing and Shenzhen. The IP Agency is licensed by the China National Intellectual Property Administration (CNIPA) and is staffed with consultants and paralegals who possess extensive experience in the registration, maintenance, and enforcement of IP rights in the PRC.

Working closely with our partners and associates, the IP Agency is committed to providing efficient IP services of the highest quality. Our services include:

• Trademark registration and portfolio management services
• Trademark prosecution and disputes before CNIPA
• Copyright registration, assignment, and license recordals
• Administrative enforcement of trademarks and copyrights
• Customs recordals and enforcement of IP
• Domain name registration and disputes
• Other non-patent IP services

The IP Agency’s direct access to and experience with CNIPA and other government authorities enhances Perkins Coie’s capabilities to directly conduct IP services for firm clients in the PRC.