The WTR 1000 focuses exclusively on trademark practice and has firmly established itself as the definitive 'go-to' resource for those seeking world-class legal trademark expertise.
Silver - Firms: enforcement and litigation
Silver - Firms: prosecution and strategy
Frankfurt Kurnit is quickly establishing a reputation as one of New York’s best IP practices, with expertise in trademarks and copyright. Turning many heads this year is Catherine Farrelly, chair of the firm’s trademark and brand management group. According to clients, “Catherine’s advice is always practical, and she has developed a good sense of our business priorities and our risk sensitivity. She is also a pleasure to work with on a personal level. I would recommend her highly to others looking for established expertise in the trademark field.” With a keenly focused litigation offering, Edward Rosenthal makes quick work of trademark, copyright and right of publicity disputes, and has done considerable work in the area of authors’ rights. Rosenthal, as well as Farrelly and Kimberly Maynard, also has a number of patrons in the financial services industry, including crypto-currency. A recent victory was secured on behalf of blockchain.com, one of the world’s leading providers of digital currency services. Maynard also has her own robust prosecution and litigation practice, which includes clients such as the food manufacturer Riverside Natural Foods and production company ThreeFourTwo Productions.
Praised by Best Law Firms and WTR 1000, the Frankfurt Kurnit Trademark & Brand Management Group represents businesses and individuals in the protection, enforcement and licensing of trademark and related rights. We manage thousands of domestic and international trademark files and have handled trademark matters and resolved disputes for recognised brands and individual trademark owners.
We have the honour of representing some of the world’s most recognisable brands in trademark matters. Our clients include:
- consumer products and services companies;
- media, entertainment and sports entities;
- advertising agencies, marketing and public relations companies; and
- performers, writers, athletes, artists, fashion models, and other celebrities and celebrity estates.
For example, we represent:
- JetBlue Airways;
- Scholastic Inc;
- John Wiley & Sons;
- NHL Enterprises;
- New York Road Runners;
- The South Beach Diet;
- Casper Sleep Inc;
- Hasbro Inc; and
- Ayr Wellness.
Our global brand management services
We handle clearance, prosecution, opposition, cancellation, monitoring, enforcement and litigation in the United States and throughout the world. In partnership with our clients, we tailor strategies to meet budgets and exceed goals for international protection. Because approximately 60% of our current clients’ portfolios is outside the United States, the lawyers and paralegals on our team deliberately think globally when addressing daily issues. We have a deep network of leading trademark lawyers around the world whom we personally know and call on regularly. Over decades, we have vetted and established relationships with service providers who are among the best in their respective territories.
On a daily basis, we:
- review international watch notices and analyse potential enforcements;
- develop strategies to maximise international protection within budgets;
- work with local associates to send cease and desist letters around the world;
- file oppositions, petitions to cancel and litigations against infringing or blocking marks;
- craft creative settlement strategies to resolve multinational conflicts;
- negotiate strategic purchases and assignments to gain territorial priority; and
- consider our client’s business needs and give practical, commercially minded advice.
Our global brand management services are customised to each client and we pride ourselves on taking a client-centred, pragmatic and personalised approach to each brand we represent. Our group is well versed in inventive strategies for searching and clearing a mark internationally within a budget, and employs creative methods to reduce costs. We keep our clients’ business needs at the forefront of our approach to brand management.
Our trademark and brand management group also frequently handles novel matters arising from new forms of technology and communications. For example, we have recently advised on matters involving:
- spoofed emails used for fraudulent schemes;
- website scraping and cloning;
- cybersquatters in foreign jurisdictions;
- publishers of infringing e-books;
- hashtag use, protection and enforcement in social media;
- social media uses and search engine results;
- non-fungible tokens and blockchain technology;
- Uniform Rapid Suspension System and Uniform Domain Name Dispute Resolution Policy proceedings; and
- Trademark Clearinghouse entries and enforcement in new gTLDs.
Trademark and trade dress litigation
If a dispute escalates, we are well placed to prosecute or defend litigation. We have handled some of the most significant trademark litigations of the past 20 years for a diverse group of clients, including representing John Deere in a famous anti-dilution case and Sephora in one of the first cases applying the Trademark Dilution Revision Act.
Domain name and internet-related enforcement expertise
We have extensive experience in domain name and internet-related enforcement, including interpreting and applying the Digital Millennium Copyright Act (DMCA), the Anti-Cybersquatting Consumer Protection Act and other new media statutes and case law. We routinely use third-party dispute mechanisms to halt infringement quickly and inexpensively. We frequently assist clients in responding to DMCA takedown notices, and in working to de-escalate potentially contentious situations.
Counterfeit and grey-market goods enforcement
We handle the takedown and removal of counterfeit and infringing products sold through third-party websites and elsewhere. Additionally, we work with customs officials and initiate proceedings before the International Trade Commission to prevent the sale and distribution of grey market, counterfeit and other infringing goods. We have successfully arranged for seizures of infringing goods.
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