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 - Individuals: prosecution and strategy
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”.
Richard Kim represents companies in trademark prosecution, counselling, licensing and litigation matters. He assists clients with all stages of securing US trademark protection and coordinates the filing and prosecution of US and international trademark applications. Mr Kim also handles opposition and cancellation proceedings before the TTAB and manages other contentious trademark proceedings in the United States and around the world.
Prior to joining Snell & Wilmer, Mr Kim was a partner at McDermott Will & Emery, where he spent more than 20 years representing clients in the clearance, selection, prosecution and protection of their trademarks. Before that, Mr Kim spent four years as an examining attorney at the USPTO and an instructor for new examining attorneys.
Mr Kim has extensive experience in managing large US and global trademark portfolios in the consumer products, pharmaceuticals, technology, scientific, food and beverages, medical devices, health and entertainment fields, and working with clients in formulating US and non-US filing, protection and enforcement strategies. He also has multinational transactional experience, including negotiating and preparing co-existence and settlement agreements. Additionally, Mr Kim’s practice includes IP due diligence in commercial transactions and acquisitions, endorsement and sponsorship agreements, and product labelling and product packaging issues.
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 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 INTA, the American Intellectual Property Law Association and the American Bar Association.