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, 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.