Keith Toms

Ranked in United States: Massachusetts
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 - Individual: prosecution and strategy

An elite all-round performer in intellectual property, with 100-plus lawyers and other specialists on deck, McCarter & English excels at building strong brands from the ground up that will endure the test of time. Between them, Boston attorneys Keith Toms, Lori Shyavitz, Erik Paul Belt and Lee Carl Bromberg have rights holders covered come what may. Toms is “perfect for anyone who needs a talented, efficient and responsive trademark contact for prosecution or litigation in the United States”: “He has a profound knowledge of trademark law, gives precise opinions with just the right amount of information to enable effective decision making and is great value for money.” Another sage counsellor, Shyavitz manages global portfolios with a deft touch, often resolving issues in China and other strategically important jurisdictions which she knows much about. Belt and Bromberg bring the heat in litigation and are hailed as seasoned trial lawyers who relish the cut and thrust of complex patent and trademark cases.

Keith Toms's Profile

Keith Toms is a skilled IP attorney with extensive experience helping his clients get the most out of their IP assets. He makes it a point to understand his clients’ business goals so he can provide incisive advice on how to transform their ideas, creativity and reputation into a sustainable and protectable business advantage.

Mr Toms regularly counsels clients on optimal strategies for securing and enforcing their trademark portfolios, both in the United States and internationally. He has advised clients on trademark selection and clearance issues in the fields of pharmaceuticals, international sporting competitions, scientific instruments, apparel, consumer products, software and alcoholic beverages, among others. He also has experience counselling clients on issues relating to reviving abandoned legacy brands.

Mr Toms is also an adept IP litigator, with extensive experience enforcing patents, trademarks, copyright and trade secrets, both in the federal courts and before administrative bodies such as the Trademark Trial and Appeal Board. Mr Toms has litigated patents covering numerous technologies, including pharmaceuticals, next-generation gene-sequencing kits, micro-electromechanical devices, medical devices, computer software and sporting equipment. He has also succeeded in high-stakes trademark litigation and opposition proceedings to both enforce and defend clients’ brands. Mr Toms has also successfully enforced copyright against national retail chains and defended a musical artist against a charge of copyright infringement.

Firm Profile

At McCarter, our more than 375 lawyers in nine offices deliver innovative solutions to our clients nationwide. For 175 years, we have been trusted business advisers to our clients, which include Fortune 100, mid-market and emerging growth companies. We have in-depth knowledge of the business issues affecting the industries we serve, including the consumer, financial, healthcare, life sciences, manufacturing and technology sectors. We understand our clients’ businesses, stay on top of their frequently changing industries and markets, and implement strategies that will lead to success.

IP overview

The IP practice at McCarter is ranked among the 100 largest IP practices in the United States, according to IP Law360. The group has more than 100 IP lawyers, technical specialists and patent agents. McCarter’s deep bench has attracted a wide range of companies throughout the world, which are diverse in both geography and industry. The firm protects everything from celebrity designer brands to sport and haute couture footwear, pharmaceuticals, food and nutrition brands, cosmetics, airlines and consumer goods. We have great strength in representing clients in high-profile trademark litigation and technically complex patent litigation.

Trademarks, copyright and trade secrets

Building and protecting a company’s brand and image are essential to business success. The IP group strategically implements domestic and international programmes to advance clients’ brand identity and reputation. The trademark attorneys not only handle global brand portfolios from the inception of a client’s intellectual property, they also help clients to build and strengthen their valuable market position. We are experienced in protecting famous brands from infringers regardless of where they reside and litigating IP matters in courts in the United States and throughout the world, including obtaining injunctive relief, asset restraints and other remedies for our clients. As a result of representing both national and international clients, we have extensive experience addressing infringement and related matters (eg, distribution, licensing and manufacturing) that cross international borders, including effectuating multi-jurisdictional litigation and enforcement. We are leaders in trademark protection, anti-counterfeiting, technology-related transactions, patents and litigation.

McCarter is attuned to the special trademark issues faced by pharmaceutical and biotechnology companies and is experienced in guiding them through the process. As new technologies continue to stretch the boundaries of traditional copyright law, the IP team provides expert counsel to clients on employing copyright to protect their valuable assets (eg, intangible data) and represents clients in licensing transactions. The team advises clients on the requirements for an effective trade secret protection programme and on protection against unfair competition by former employees or business partners, as well as by competitors. Our experience in litigating trade secret and unfair competition cases gives clients an advantage when disputes arise.

Global brand strategists

McCarter’s partners are known in more than 70 countries for developing and executing unique global brand strategies. Over the past 30 years, team members have developed an extraordinary network of attorneys, government officials, customs officers and law enforcement personnel who help get things done for the firm’s clients. Partners have decades of experience establishing worldwide programmes to protect valuable IP rights, including trademarks, trade dress and product designs, trade secrets and copyright. The group has specialised capabilities for dealing with issues relating to the Internet, including dealing with cybersquatters and internet counterfeiters on a cost-efficient basis; working with domestic and foreign companies to deal with foreign-based websites and public auction and social media platforms; conducting successful lawsuits and Uniform Domain Name Dispute Resolution Policy actions against domestic and foreign website owners; and developing proprietary forensic tools for tracking both the success of takedown programmes and offending URLs, including when they resurface. We are known as the ‘go-to’ firm in dealing with these types of IP issues around the world.

Patent prosecution and IP litigation

McCarter’s patent attorneys and professionals have industry experience and graduate degrees in relevant science and engineering fields. We are active in all facets of the high-tech and life sciences sectors, including biotechnology, pharmacology, chemistry, nanotechnology, optoelectronics, robotics, medical devices, telecoms, advanced control systems, green technologies, biometrics, software, consumer products and a range of defence, aerospace and energy technologies. McCarter’s technical expertise extends across all disciplines, providing a depth and breadth of experience that ensure effective and efficient IP counselling.

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