McAndrews, Held & Malloy Ltd

WTR Research

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.

Bronze - Firms

Capitalising on robust patent, trademark and copyright practices, McAndrews employs an interdisciplinary scheme of IP thinking to support rights holders and their business development in every conceivable way. The boutique maintains a rare level of consistency in terms of work quality and service, as a result of the uncommon stability of its team: many of its members have spent their entire careers here, which speaks to the firm’s unique culture and supportive dynamic. Patrick Arnold joined the ensemble after finishing his economic studies and has been a lynchpin of its success in the 32 years since. He links up with Hank Spuhler – who also arrived shortly after completing a bachelor’s degree 22 years ago – to add value for clients such as Transform Holdco (formerly Sears Brands and Kmart), whose global portfolio of over 3,000 marks they manage.  Arnold is chiefly known for his litigation prowess, which he recently displayed in a TTAB win for AbbVie, whose SKYRIZI trademark was found not to infringe Novartis’s IZIRIZE mark. Spuhler also litigates with aplomb on both the patent and soft IP sides. Ronald DiCerbo has been part of the McAndrews family for over 24 years and continues to contribute richly as a US and international trademark and designs protector and enforcer.

Firm Profile

McAndrews, Held & Malloy is a premier, full-service IP and technology law firm that serves some of the world’s largest and most iconic companies, as well as other businesses and innovators of all sizes and in virtually every field. These organisations rely on McAndrews to handle complex, high-stakes matters ranging from trademark and patent litigation to strategic trademark portfolio management and design and trade dress rights.

McAndrews is a uniquely positioned law firm modelled to efficiently and effectively serve clients, providing world-class lawyers, approaches and insights, while at the same time offering exceptional service and value. Clients appreciate the firm’s highly integrated, collaborative, team-based approach, which features unusually high levels of senior-attorney attention. In addition, McAndrews is wholly focused on intellectual property. That results in distinct advantages in terms of how it staffs teams, and it delivers exceptional results.

McAndrews is driven by a mission that has not changed since our firm was founded: to deliver best-in-class, highly effective and efficient IP legal expertise, as well as extraordinary, personalised service.

Trademark experience

At McAndrews, we offer skilled management of large, small and single trademark portfolios. Our clients benefit from our deep knowledge of both US and international trademark law. That ensures effective, strategic counsel on the determination, adoption and protection of trademarks, as well as copyrighted material, design patents, brand names, brand marks, internet-based assets and other proprietary work. The breadth of our experience in preparing trademark opinions and in the filing, prosecuting and maintaining both US and foreign trademark applications and registrations is evidenced by the substantial number of matters we handle in any given year.

Our trademark clients also benefit from our expertise in patent law. There is considerable overlap between the two disciplines and, as a patent and trademark firm, we deliver valuable expertise in both.

Trademarks are often among a company’s most valuable assets. We work to ensure that infringement or dilution of a mark does not result in lost revenue, brand/category leadership or goodwill. Further, our counselling during the early phases of trademark development helps avoid costly conflicts and potential enforcement problems. We also provide guidance in the related areas of trade dress and design patents. A product’s look can be as valuable, strategic and proprietary as its function and technology and often provides significant opportunities for additional protection.

Should litigation prove necessary, our extensive trademark litigation work includes the assertion and defence of trademark infringement claims and unfair competition in federal, state and foreign courts, along with both opposition and cancellation proceedings before the Trademark Trial and Appeal Board and other similar tribunals worldwide. Because we possess such strong litigation experience, we have developed an informed and strategic perspective on trademark prosecution, allowing us to prepare comprehensive applications that pre-empt potential challenges and help discourage potential litigants.

Areas of focus

  • Strategic counselling
  • Prosecution
  • Litigation, including opposition and cancellation proceedings
  • Domain names
  • Counterfeiting
  • False advertising
  • International trademarks

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