Snell & Wilmer LLP

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.

Silver - Firms

Snell & Wilmer’s highly trained and eminently capable trademark partners in California, Arizona and DC link up seamlessly to render fulsome support to rights holders. Making insightful contributions to the brand selection process and throughout all phases of prosecution, they ensure that everything is done right for those launching new products and services in the market. This resonates with many emerging enterprises, which find an ideal running mate in Damon Ashcraft: he understands the needs of young companies and is brilliant at identifying and eliciting IP value for them. Heavily involved with ICANN, Ashcraft has a refined knowledge of internet-related trademark issues. Lee Fraley does sterling work for businesses diverse in size and sector, all of which welcome his incisive and wide-ranging counsel encompassing patent, copyright, trademark and trade secret law. “Lee provides thoughtful guidance on third-party violation of marks and is extremely proactive in building impenetrable lines of defence around portfolios.”

Silver - Firms: enforcement and litigation

Snell & Wilmer has trademark talent in California, Arizona and DC, and a burnished national reputation on all fronts of brands practice. The firm’s IP group continued its expansion in 2021 following major lateral recruitment moves in 2020, giving clients with diverse portfolios more resources and options. In the capital, John Dabney, Mary Hallerman and Richard Kim have settled in extremely well since their arrival in Spring 2020. According to foreign associates, they are “a great set of practitioners with all the wisdom and firepower needed to help out in the most difficult situations”. Working collaboratively, they undertake wide-ranging clearance, prosecution and enforcement work for Medtronic, Pebble Beach Company and many other prestigious names. Dabney and Hallerman are admired for their contentious proficiency, which they put on clear display in their recent representation of Oregon Brewing Company in a multi-layered dispute over its ROGUE trademark with Excelled Sheepskin & Leather Coat Company, in which they ultimately established that their client held nationwide rights to the relevant mark for apparel, and that Excelled’s use of the mark caused a likelihood of confusion. Coming in for special praise, Kim is “unparalleled in his ability to give strategic and pragmatic advice addressing USPTO examination procedure and office actions”.

Firm Profile

Snell & Wilmer is a full-service business law firm with more than 450 attorneys practising in 16 locations throughout the United States and in Mexico. The firm represents clients ranging from large, publicly traded corporations to small businesses, individuals and entrepreneurs.

Snell & Wilmer’s IP group, which consists of more than 40 lawyers, offers a comprehensive array of services, including trademark prosecution and litigation, patent prosecution and litigation, trade secret protection, copyright registration and protection, and licensing, distribution and other commercialisation agreements. Snell & Wilmer’s IP team advises clients on how to avoid IP liability and infringement.

Our trademark attorneys have extensive knowledge of our clients’ businesses and are equipped to assist in an efficient and sophisticated manner. Our clients appreciate the practical, business-focused approach to our trademark advice.

Our trademark clients are spread across the United States and around the world. Their needs are as diverse as their businesses, and their requirements are as broad as their geography. Our trademark team represents Fortune 100 companies, medium-sized companies and emerging companies in clearing, registering, enforcing and monetising their trademark and trade dress rights throughout the United States and the world.

Federal trademark clearance, registration, portfolio management and licensing

Our attorneys advise clients on trademark availability and selection, prepare trademark applications and prosecute applications before the USPTO through to registration. Thereafter, we assist clients in maintaining registered trademark rights. We manage approximately 11,000 registered and pending US and international trademarks for our clients in a broad array of industries, including food and beverages, apparel and footwear, pet care and pet food, automobiles, pharmaceuticals, biotechnology, audio equipment, medical devices and dental products and services, sporting goods, software, hotel and resort services, assisted living, renewable energy and water resources, cannabis/CBD, educational services, sports and entertainment services, lawncare and home improvement services, electronic devices and wireless products. Our attorneys also regularly assist clients in monetising their trademarks by way of brand extensions and licensing.

Trademark, trade dress and unfair competition litigation

Our trademark attorneys assist clients in policing and enforcing their trademarks, including preparing cease and desist letters and settlement agreements. Likewise, our attorneys assist clients in responding to cease and desist letters. If an amicable and satisfactory resolution is unachievable, we represent plaintiffs and defendants in actions for trademark and trade dress infringement, unfair competition, trademark dilution, counterfeiting, cybersquatting, false endorsement and false advertising in federal district and appellate courts throughout the country. We also represent clients before the TTAB in opposition and cancellation proceedings. Our trademark attorneys have represented clients in numerous UDRP cases against cybersquatters.

International trademark protection and disputes

Our attorneys have extensive, longstanding relationships with hundreds of foreign law firms. We work closely with those firms to assist clients in registering and maintaining their trademarks around the globe, including through the Madrid Protocol. Our attorneys also manage trademark opposition and cancellation proceedings in other countries, working alongside our trusted network of foreign associates and negotiating settlements of worldwide trademark disputes. They have supervised and assisted in recovering trademarks and domain names registered by cybersquatters in foreign countries. Our global and multinational clients expect and demand this breadth of experience and level of sophistication from their trademark counsel.

Snell & Wilmer’s trademark attorneys are annually recognised as leaders in their field in national legal rankings such as World Trademark ReviewThe Legal 500Super LawyersThe Best Lawyers in AmericaUS News Media GroupBest Lawyers and Managing Intellectual Property. Our lawyers participate in a variety of professional organisations, including various sections of INTA, the American Intellectual Property Law Association and the American Bar Association.

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