Practice Areas

Trademarks

Marshall, Gerstein & Borun provides clients a full range of trademark services, backed by a reputation for strategic development, portfolio management and trademark litigation that few law firms can claim.

We vigorously represent our clients' interests at all stages of the process, from clearance and registration of new trademarks, to maintenance and protection of established trademarks, and protection and use of trademarks on the Internet. Our attorneys apply their substantial experience to achieve favorable outcomes in matters ranging from unfair competition, trademark infringement and Internet domain name disputes, and opposition and cancellation proceedings, to portfolio management, prosecution, clearance and licensing issues.

In trademark litigation, we command a formidable presence both inside and outside of the courtroom, having successfully represented clients in precedent-setting cases in the courts and before the Trademark Trial and Appeal Board. Recent highlights include:

• Marshall, Gerstein & Borun ("MGB") attorneys were successful in canceling U.S. Trademark Registration No. 941,497 for DAKOTA for various clothing items on the grounds of abandonment.  The owner of the DAKOTA registration, Dakota Industries, Inc., had sued MGB's client, Cabelas.com, in South Dakota charging Cabelas.com with trademark infringement and state and federal unfair competition, among other claims, as a result of Cabela's sales of clothing using "Dakota Vest" and "Dakota Jacket."  The lawsuit, which MGB also successfully defended on summary judgment, prompted Cabelas.com to seek cancellation of Dakota Industries' federal registration for DAKOTA, which had not been asserted in the state litigation.  In the cancellation proceedings, MGB lawyers leveraged discovery findings from the state litigation.  Specifically, MGB relied on tax returns and other business documents and the deposition of the Dakota Industries' principal in order to substantiate its suspicion that the plaintiff had abandoned any trademark rights in DAKOTA years ago and briefed summary judgment on that basis.  The Trademark Trial and Appeal Board adopted the position advocated by MGB in its decision dated  September 26, 2008, finding that the DAKOTA mark had been abandoned and granting summary judgment in favor of MGB's client with cancellation of the DAKOTA registration being ordered.  The MGB attorneys were Thomas I. Ross and Gregory J. Chinlund.  [Trademark Trial and Appeal Board Cancellation No. 92047600].

• In HighBeam Marketing, LLC v. Highbeam Research, LLC, opposition no. 91162372 before the U.S. Patent and Trademark Office, the Trademark Trial and Appeal Board is addressing whether Highbeam Research's HIGHBEAM mark for internet research is confusingly similar to HighBeam Marketing's HIGHBEAM mark for marketing services.  To support its position that the marks are confusingly similar, HighBeam hired an expert witness who conducted a likelihood-of-confusion survey.  When Highbeam Research sought to depose the expert, HighBeam Marketing asked Highbeam Research to agree to pay the expert's fee for the time spent in the deposition.  In support of that request, Highbeam Marketing cited a court decision in which a party had been ordered to pay part of an expert's fee for that time. On behalf of Highbeam Research, we refused to make that concession.  Instead, we confirmed that the expert would not otherwise appear at her deposition and then asked the Board to preclude HighBeam Marketing from calling the expert at trial or offering her survey into evidence.  In a January 23, 2008 order, designated as precedential, the Board granted our motion.

We have developed computerized systems for and expertise in trademark searches, filing trademark applications, prosecuting opposition and cancellation proceedings, maintaining registered marks, and monitoring client registrations for renewals and infringement issues.

In addition, our firm has been an innovator in protecting trademarks and intellectual property on the Internet. Our experience in this area includes obtaining domain name registration, domain name monitoring, and challenging trademark infringement and cybersquatting through litigation or ICANN’s Uniform Dispute Resolution Policy proceedings. We also offer counseling, policy drafting, licensing and contract services relating to online trademark use.

Marshall Gerstein attorneys and trademark administrators are active members of the International Trademark Association (INTA), and they have held committee and leadership positions on the Dictionary, Web Site Policy and Oversight Programs, Membership Communication and Membership subcommittees.

Representative Clients

• AC Nielsen (US), Inc.
• Aon Corporation 
• Ball Horticultural Company
• Chr. Hansen, Inc
• The Crosman Corporation
• CTI Industries, Inc.
• Dade Behring, Inc.
• Goss International Corporation
• Hollister Incorporated
• Jon-Don, Inc.
• JRS Pharma LP
• The Nielsen Company
• Nielsen Media Research, Inc. 
• North American Company for Life and Health Insurance
• Penford Corporation
• Penwest Pharmaceuticals Co.
• PGA of America
• Relìv International, Inc.
• Schuessler Knitting Mills, Inc.  
• Zenith Electronics LLP