Trademark and Copyright


Honigman’s Trademark and Copyright practice is distinguished by the deep legal and practical experience of our attorneys and intellectual property specialists, by our strong business focus, and by our drive to deliver the best value to our clients. We offer world-class experience and service levels at rates well below competing firms in New York; Washington, D.C.; Chicago; Los Angeles; and other major markets in the United States.

We have extensive U.S. and foreign experience in trademark, trade dress, copyright, domain name, e-commerce, and related IP matters. We have a deep bench of professionals available at a wide range of rates. We routinely apply legal project management and vendor management best practices to ensure that our work—and the work of local and foreign counsel, investigators, and other service providers—is performed successfully, on time, and within budget.

Our clients own some of the most recognizable trademarks and artistic works in the world. We manage a number of large, high-volume trademark, copyright, and domain name portfolios for large U.S. and foreign clients, as well as many smaller portfolios for small and medium-size entities. We have provided advice on many challenging global trademark clearance projects and devised many global filing and management strategies. We have conducted many copyright clearance programs and fair-use analyses for museums, archives, and other content owners of all sizes. We advise clients on domain name infringement and registration matters and manage active and passive domain name portfolios.

Our Trademark and Copyright attorneys have considerably more transactional experience than attorneys in a typical IP group. We understand trademark and copyright issues in the context of an overall business transaction. We understand tax issues and have extensive transfer pricing compliance experience—from valuations and preparation of contemporaneous documentation, to preparing, recording, and implementing intercompany agreements. Given Honigman’s extensive Private Equity, Venture Capital, Mergers and Acquisition practices, we are very active in conducting due diligence and in negotiating and drafting purchase and sale agreements, security agreements, and other related agreements. We have negotiated and drafted literally thousands of assignment and license agreements.

We register, renew, and maintain a large volume of trademark registrations in the U.S. Patent and Trademark Office. We assist many U.S. and foreign clients in responding to Office Actions and overcoming refusals to register in the USPTO. We perform the same services on a global basis, with the assistance of a select network for foreign trademark counsel.

We are one of the leading law firm filers of copyright claims in the U.S. Copyright Office. We have extensive experience in obtaining expedited registrations, conducting regular registration programs for content authors, training in-house teams to register works, and registering software and e-commerce works.

Finally, Honigman’s Trademark and Copyright practice includes many attorneys with significant experience in enforcement of copyright and trademark rights, including structuring cost-effective enforcement programs, representing clients in copyright and trademark infringement and anti-counterfeiting litigation, trademark oppositions and cancellations, anti-cybersquatting actions, and alternative dispute resolution proceedings.

Our services include:
  • Trademark clearance
  • Trademark registration
  • Trademark enforcement and defense, including TTAB proceedings
  • Certification marks
  • Copyright clearance
  • Copyright registration
  • Copyright enforcement and defense
  • Trademark and copyright transactions, including licensing and due diligence for mergers and acquisitions
  • Portfolio management for trademarks, copyrights, and domain names
  • E-commerce transactions
  • Domain name enforcement and UDRP proceedings
  • Anti-counterfeiting counseling and enforcement
  • Registration and enforcement of IP with customs agencies
  • Music, movie, and publishing transactions and disputes
  • Software transactions and disputes
  • Advertising, packaging counseling, and disputes
  • Museum transactions and disputes

Representative Matters

  • Obtained a preliminary injunction and monetary damages for a well-known brand in a trademark case filed in the Central District of California
  • Enforced a consent judgment and obtaining significant damages on behalf of an automaker in a trademark litigation case in the Southern District of Florida
  • Defended website owner involving alleged improper use of trademarks
  • Represented surviving members of a music group relating to copyright and trademark use
  • Defended news outlets in a defamation and trademark litigation filed by subjects of investigative journalism reporting
  • Won judgment (affirmed on appeal) against a retailer displaying infringing trademarks

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