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 broad IP skillset makes it a preferred choice for those with diverse portfolios. On the trademark side, the firm provides incisive advice on everything from name and mark selection through registration to policing and enforcement; in all endeavours, its lawyers display a finely tuned sense of risk, thanks to significant experience in trademark, trade dress and unfair competition litigation. Forming the backbone of the group in Arizona are Damon Ashcraft and Lee Fraley. For Ashcroft, an agile trademark and patent lawyer, expertise in the internet and domain names area is a strong selling point; he has shown excellent leadership in various ICANN roles. Fraley is appreciated for his well-judged counsel on strategic IP matters and commercially focused approach to portfolio management and development. His clients include Grand Canyon University, Zero Mass Water and True Religion, the latter of which has recently benefited from his licensing nous.

Bronze - Firms: prosecution and strategy

Silver - Firms: enforcement and litigation

A major player in the western United States, Snell & Wilmer has an increasingly national reputation, fuelled by notable recent developments in its trademark practice: in April 2020, it unveiled new signings John Dabney, Mary Hallerman and Richard Kim, who joined from McDermott Will & Emery. Dabney, who captained his previous firm’s trademark litigation group for a decade, is a hugely experienced lead counsel for federal court actions and TTAB proceedings. He is a voracious reader of trademark news and cases, which shines through in his counsel, and he has a fine sense of when to dial up the aggression. Fellow litigator Hallerman aligns with Dabney in an effective pairing, as illustrated by a recent trade dress infringement victory for Lotte Confectionery, maker of Pepero biscuit sticks, against Ezaki Glico, maker of Pocky biscuit sticks. Hallerman also has a passion for trademark law, to which she devotes her full time and energy. Dabney and Kim also work closely together and share a lot of clients, though Kim’s focus lies in prosecution and counselling. As a former USPTO examining attorney and instructor for new examiners, he understands the agency’s mindset, which helps him to push things along at pace and towards the right conclusions.

Firm Profile

Snell & Wilmer is a full-service business law firm with more than 450 attorneys practising in 15 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 Trademark Trial and Appeal Board 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 Review, The Legal 500, Super Lawyers, The Best Lawyers in America, US News Media Group, Best Lawyers and Managing Intellectual Property. Our lawyers participate in a variety of professional organisations, including various sections of the International Trademark Association, the American Intellectual Property Law Association and the American Bar Association.

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