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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 over 13,000 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 Leading Law Firm Rankings

Since 2004, Calfee has been recognized as a Leading Law Firm for Intellectual Property by Chambers USA, most recently in Band 1 in Ohio (2023). Clients provided feedback to Chambers USA researchers, "Calfee 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. The IP team is highly experienced in the engineering, chemical, and biological sectors, with notable abilities in handling matters for consumer products and manufacturing clients. The team is responsive, practical, and extremely knowledgeable."

Clients interviewed by Chambers USA said, "The firm offers excellent value for its services. The team is dedicated and provides sophisticated IP legal services at an attractive cost. 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."

Chambers USA 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."

Best Lawyers® “Best Law Firms” Rankings

Calfee was selected for inclusion in the 2024 "Best Law Firms" rankings in the following areas:

  • Copyright Law (Regional Tier 2 Cleveland)
  • Litigation – Intellectual Property (National Tier 3, Regional Tier 1 Cleveland)
  • Patent Law (Regional Tier 1 Cleveland)

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

Calfee's Intellectual Property practice group has been selected as a Leading Trademark Law Firm (Silver Ranking), and Calfee Partner Raymond Rundelli has been selected as a Leading Lawyer by the World Trademark Review 1000 – The World’s Leading Trademark Professionals publication from 2015-2024. 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

  • Serving as primary IP counsel for a publicly traded, Fortune 500 global manufacturing client and its operating companies with responsibility for the client's worldwide IP portfolio, including 1,000+ patent matters and 2,000+ trademark matters. With regard to clearance, Calfee provides right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. We also prepare, file, and prosecute patent and trademark applications.
  • Serving as primary IP counsel for a publicly traded manufacturer and its operating companies with responsibility for more than 125 active patent and trademark matters for this client. With regard to clearance, we provide right-to-use and non-infringement analyses and opinions. With regard to procurement, we provide patentability and registrability analyses and opinions. Calfee also prepares, files, and prosecutes patent and trademark applications, and we represent the company in IP-related disputes.
  • Managing a publicly traded, Fortune 1000 multinational manufacturer's global trademark portfolio, including filing and prosecution, portfolio management, enforcement, and disputes. Calfee advises the client in patent preparation and prosecution matters, including strategy and filings. Calfee advises on patent enforcement matters, which are currently in pre-litigation investigation, including developing infringement analysis to stop infringement in markets with high-revenue product lines. Calfee also assists the client with a variety of other intellectual property counseling matters, including patent opinions, IP-related terms in agreements, cross-border enforcement, IP licensing, IP acquisition (particularly in China), and advising on best practices for protecting and harvesting intellectual property.
  • Serving as chief outside IP counsel for a multi-billion dollar, publicly traded, Fortune 1000, multinational holding company with multiple operating companies based in the U.S. and abroad. Calfee is responsible for patent annuity payments on all patent matters and assists many of the operating companies with the prosecution of patent applications, both in the U.S. and internationally. Calfee manages the U.S. trademark and patent work directly and supervises a network of foreign associates when action is required in foreign jurisdictions. Calfee also offers primary counsel on the impact of corporate reorganization efforts on the ownership and management of the IP of the operating companies. Calfee IP lawyers supervise most of the intellectual property due diligence related to the mergers and acquisition activity of the client. Calfee represents the company in several trade secret matters.
  • 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 supervising an international trademark prosecution
  • Maintenance and renewal of registered trademarks
  • Counseling regarding the 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 the U.S. and globally
  • Supervise international oppositions and cancellations
  • Negotiate and draft co-existence agreements in the 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

News

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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, Chambers USA

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