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Overview

Unlike IP boutique firms, Calfee’s Trademark practice is an important part of a leading general corporate and litigation firm. Our attorneys provide full-service representation in all aspects of trademark law, including domestic and foreign trademark registration, strategic portfolio management and enforcement, oppositions and cancellations, licensing and litigation of trademark, trade dress, domain name and unfair competition claims such as false advertising.

We have provided trademark portfolio and enforcement support services for more than 20 years and have more than 8,500 active trademark matters for clients under our care.

We counsel both private and public companies in a variety of industries on trademark and unfair competition matters such as false advertising.

For clients with trademark rights outside the United States, our attorneys work with and through an extensive network of foreign associates that covers virtually every jurisdiction around the world in which trademark rights are recognized.

On the portfolio management side, each of our trademark clients is assigned its own trademark administration team. Our full-time docket staff and sophisticated IP docketing system help us ensure responsiveness to our clients and maintain quality and accuracy of our work.

Our vast experience in counseling on and prosecuting thousands of trademark matters for clients around the world allows us to devise cost-effective strategies to maximize prosecution success. It has been our experience that many routine “informalities” raised in office actions can be avoided by careful preparation in the early stages of the selection and prosecution process.

While litigation is rarely desirable to our clients, the business and dispute resolution experience of our intellectual property lawyers is invaluable as it enables our attorneys to anticipate and help avoid potential portfolio development and management disputes. It also can optimize a client’s position if litigation becomes unavoidable, because we understand the importance of monitoring how marks are used, the importance of careful searching techniques and protocols, and the need for systematic and continuous documentation efforts with respect to the use of marks.

Noteworthy

Chambers USA Band 2 Ranking in Intellectual Property (Ohio)

For well over a decade, our Intellectual Property group has been ranked and recognized by Chambers USA. In 2021, Chambers USA researchers noted that the team is "Esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio and the Midwest and across the USA. Highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

A client interviewed by Chambers USA 2020 researchers was quoted saying, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost." A market commentator added, "Calfee's IP attorneys are highly regarded; they are true experts, and they do excellent work for their clients." "This is a power bench; the team works well together and supports each other well. Each individual is responsive and knowledgeable in their expertise and experience. This is definitely one of my favorite firms to work with," stated another client.

Chambers USA 2020 researchers also found Calfee's IP team to be held in "very high regard by fellow practitioners who note Calfee's extensive experience representing clients in wider patent and trademark matters, IP litigation matters, appellate work, and advising companies on managing IP assets in China."

Firm Vice Chairman and Intellectual Property practice Co-Chair, John S. Cipolla, was ranked by Chambers USA 2021 in Band 1 for Intellectual Property (Ohio). Chambers USA researchers stated, "[John] receives notable acclaim for his broad contentious and noncontentious practice, and is particularly noted for his work in patent litigation." Clients interviewed by Chambers USA researchers remarked, "He takes difficult subjects and makes them easier to understand." Another client commented, "He's hard-working and has good judgment."

Partner and Intellectual Property practice Co-Chair, Mark W. McDougall, was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers noted, "[He] gets immersed in the facts and provides detailed guidance." Another source mentioned, "Mark is a smart patent lawyer."

Partner Raymond Rundelli was ranked by Chambers USA 2021 in Band 4. A client interviewed by Chambers USA researchers mentioned, "He's responsive, thorough and thoughtful." Chambers USA 2020 researchers reported, "[Ray] comes recommended as an 'excellent trademark attorney' who assists clients in an array of complex litigation and portfolio management work. His practice also extends to patent-related matters."

Partner Todd Tucker was ranked by Chambers USA 2021 in Band 3. Chambers USA researchers noted, "[Todd] takes on a range of domestic and cross-border IP disputes, including patent litigation. His experience includes matters concerning the protection of assets in China, and he regularly advises Chinese entities on US-based IP portfolios." Clients interviewed by Chambers USA researchers stated, "Todd stands out in his ability to provide practical advice from a multinational IP perspective because of his strong, unique background in patent litigation and international patent prosecution." Another client mentioned, "He helps make complex processes simple."

U.S. News – Best Lawyers® “Best Law Firms” Rankings

Calfee was selected for inclusion in the 2021 "Best Law Firms" rankings by U.S. News – Best Lawyers in Litigation - Intellectual Property (National Tier 3, Metropolitan Tier 1 Cleveland) and Patent Law (Metropolitan Tier 1 Cleveland).

World Trademark Review 1000 – The World’s Leading Trademark Professionals

Calfee Partner Raymond Rundelli has been named to the World Trademark Review 1000 – The World’s Leading Trademark Professionals publication from 2015-2021. The annual WTR 1000 research directory recognizes the world’s leading trademark firms and professionals. Each year, WTR conducts exhaustive qualitative research to identify the firms and individuals that are deemed outstanding in this critical area of practice.

Professionals

Experience

Experience

  • Successfully defended a coatings manufacturer in a trademark dispute with a competitor seeking temporary injunctive relief
  • Represented a home medical products provider in a trade dress dispute
  • Represented a Fortune 500 satellite television provider in an unfair competition and trademark cancellation dispute with a former retailer that was vigorously contested and settled shortly before trial
  • Successful prosecution of dozens of domain name arbitrations
  • Assisted a Fortune 500 company with devising and implementing a cost reduction program designed to reduce expenses associated with foreign trademark registration
  • Assisted a Fortune 500 company with the establishment and subsequent unwinding of multiple intellectual property holding companies

Services

Services

Prosecution & Portfolio Management

  • Trademark clearance searches
  • Preparation and prosecution of U.S. and certain international trademark applications
  • Counseling on and supervision of international trademark prosecution
  • Maintenance and renewal of registered trademarks
  • Counseling regarding interplay of trademark and domain name issues
  • Intellectual property inventories and audits
  • Design and implementation of maintenance and enforcement programs
  • Advertising clearance advice and counseling regarding substantiation of advertising claims
  • Educational programs for clients and their employees

Transactional

  • Licensing agreements
  • Counseling regarding trademark, false advertising and licensing issues in connection with mergers and acquisitions
  • Due diligence for mergers and acquisitions as well as financing
  • Preparation and recordation of assignments and other events affecting ownership 

Litigation & Opinions

  • Prosecute and defend trademark, false advertising and unfair competition actions
  • Prosecute and defend trademark oppositions and cancellations in S.
  • Supervise international oppositions and cancellations
  • Negotiate and draft co-existence agreements in settlement of trademark disputes
  • Provide trademark and trade dress infringement analysis
  • Provide false advertising analysis and render opinions
  • Provide trademark dilution analysis
  • Conduct trademark vitality and infringement studies and render opinions

News & Events

Blog Posts

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"Calfee's IP group is esteemed for its handling of IP litigation and portfolio management on behalf of large clients in Ohio, the Midwest and across the USA. They are highly experienced in the engineering, chemical and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients."

Researcher comments from the Chambers USA 2021 Guide

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