Practice

Trademark, Copyright & Unfair Competition

Safeguarding your brand

A lot rides on a name, whether you’re protecting your own brand, pushing imitators back across the line, or defending against allegations of stepping on someone else’s identity. At Foley Hoag, our Trademark, Copyright and Unfair Competition attorneys handle all types of trademark, copyright, trade secret, Internet, and domain name issues for our clients, as well as false advertising, defamation, and other unfair competition matters. We successfully represent clients on both sides of the issues, from smaller companies accused of infringement to large corporations policing and protecting their famous brands.

Whether your trademarks are registered or are safeguarded under common law, our lawyers provide creative strategies for protecting them. We have conducted investigations into improper use of trademarks, assisted clients when trouble occurs at the border by working with U.S. Customs to prevent the importation of counterfeit and gray market goods, and represented clients in federal district courts across the nation in cases involving the Lanham Act and the Anti-Cybersquatting Consumer Protection Act.

Our lawyers have significant experience litigating trademark registration issues in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, where we employ creative and innovative strategies to secure our clients’ trademark registration rights. When the issue is domain names, our clients can rely on our unparalleled understanding of the various trademark rights protection procedures provided by ICANN, the Internet Corporation for Assigned Names and Numbers, including the Uniform Domain Name Dispute Resolution Policy (UDRP).

Foley Hoag handles the full scope of copyright matters for our clients, including creating company policies regarding the usage of copyrighted material, implementing multi-faceted registration strategies, enforcing copyrights against infringers on the Internet through the Digital Millennium Copyright Act (DMCA), and engaging in large-scale litigation to protect and defend our clients’ valuable copyrights.

In addition to protecting our client’s intellectual property, we work with clients to determine acceptable limits in client advertising, and assist clients in evaluating advertising and related statements by competitors that cross the line into deception, disparagement, and defamation.

Well known in the business community and the courts, our lawyers are on the front lines in shaping law and policy as leaders in the International Trademark Association, the American Intellectual Property Law Association, the Intellectual Property Law Section of the American Bar Association, and other key organizations.

When business needs fall outside traditional work hours, clients benefit from immediate and reliable web access to their trademark portfolios. 

Areas of Focus

Our deep experience in trademark, copyright and unfair competition includes:
  • Trademark enforcement and disputes
  • Trademark portfolio development
  • Trademark transactions
  • Trade dress
  • Copyright enforcement and disputes
  • Copyright advice
  • Domain name sales and acquisitions
  • Internet enforcement
  • Customs enforcement
  • Trade secrets
  • Commercial disparagement
  • Defamation
  • False advertising

Experience

PROSECUTION AND COUNSELING
  • Represented famous Italian luxury brand in connection with trademark, trade dress, and copyright protection.
  • Represented various clients in connection with trade dress matters, including food, beverage, and cosmetic containers and labeling; retail building interiors and exteriors; product configurations; and color marks. 
  • Handled global trademark prosecution, portfolio management, and brand protection for famous luxury hotel and hospitality company. 
  • Handled global trademark prosecution, portfolio management, and brand protection for sportswear and outerwear company. 
  • Represented one of the largest and most experienced cultivators, manufacturers, and providers of cannabis products and related services in connection with global trademark prosecution.
  • Represented well-known online financial services and marketing company in connection with trademark prosecution. 
  • Counseled world-famous food and beverage company and retailer in connection with numerous copyright and trademark clearances for its rewards cards. 
  • Conducted extensive pharmaceutical company and product name clearance and prosecution for life sciences companies. 
  • Advised clients in connection with trademark, copyright, and advertising best practices, including influencer strategy, for social media platforms including Facebook, X, TikTok, and Instagram. 
  • Counseled clients with respect to copyright protection, ownership, and registration for works including software, films, fine art, websites, jewelry, literary works, and music. 

ENFORCEMENT AND LITIGATION
  • Represented well-known publisher of fire safety standards and electrical codes in anti-counterfeiting litigation against over 190 third-party marketplace sellers based in the United States, Canada, and India doing business on Amazon, eBay, and other online marketplaces.
  • Represented a pop-up greeting card company in a copyright infringement action against a competitor, securing a complete trial victory with a jury verdict that found infringement of our client’s original greeting card designs and awarded the maximum available damages.
  • Represented leading coffee company and retailer in trademark infringement, dilution, and false advertising lawsuits. 
  • Obtained dismissals of copyright litigations brought against world-famous film and television studios on merits and jurisdictional grounds. 
  • Successfully represented American luxury hotel brand in an appeal before the Trademark Trial and Appeal Board, to reverse the U.S. Patent & Trademark Office’s refusal to register our client’s marks on likelihood of confusion grounds. Successfully argued on appeal that the cited mark was weak due to third-party uses. 
  • Before the World Intellectual Property Organization (WIPO) and The Forum, successfully obtained transfer of domain names for various clients from defendants known for engaging in a pattern of acquiring domain names that incorporate the famous trademarks of others and selling counterfeit products online. 
  • Represented famous Italian luxury brand in connection with trademark, trade dress, and copyright enforcement. 
  • Successfully obtained transfer of domain names in Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings for companies across industries, including luxury hotel and hospitality, financial services, life sciences, food and beverage, retail, and consumer products. 
  • Represented one of the largest and most experienced cultivators, manufacturers, and providers of cannabis products and related services in connection with global trademark enforcement.
  • Represented world-famous American clothing, accessories, and lifestyle brand in connection with brand protection, enforcement, and contentious proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. 
  • Represented well-known online financial services and marketing company in connection with trademark enforcement.
  • Successfully argued appeals of the U.S. Copyright Office’s refusal to register sculptural works. 
  • Represented a well-known nutritional supplement manufacturer in connection with enforcement and litigation related to sales of counterfeits online. 
  • Represented companies in connection with online marketplace enforcement, including copyright, counterfeit, right of publicity, and trademark takedowns, along with coordinating global notice and takedown programs. 

LICENSING AND OTHER TRANSACTIONS
  • Represented luxury hotel and hospitality company in connection with negotiating and drafting trademark licenses and restaurant consulting and management agreement. 
  • Negotiated and prepared licensing agreements for sportswear and outerwear company. 
  • Represented one of the largest and most experienced cultivators, manufacturers, and providers of cannabis products and related services in connection with licensing.
  • Represented well-known online financial services and marketing company in connection with licensing. 
  • Developed a trademark licensing and certification program for a fitness company. 
  • Conducted due diligence on trademark, copyright, and domain name portfolios of potential acquisition targets, including companies in the life sciences, technology, consumer products, food and beverage, fashion and luxury goods, and hospitality industries. 
  • Advised educational software company in rebranding amidst multiple mergers.