Trademark

Experienced Branding Advisors

The value of a good reputation in the market starts with the selection of a strong brand. We know from experience how to guide clients toward strong brands, and we understand the business value of doing it well.

The business objectives of our clients play a large role in our advice as we seek marks that will secure exclusivity in their key markets, avoid potential infringement issues, and maximize commercial impact. For this reason, we have built internal systems and created strong offerings to be highly effective in our support of clients through such critical decisions.

Because a company’s name, trademarks, and trade dress are critical in delivering the brand promise, protection of those assets calls for rigorous analysis, strategy, and execution. Our clients value the longstanding experience we bring to their challenges. Decades of experience in counseling our clients on the strategic selection, cost-effective registration, on-going management, and enforcement of trademark, trade dress, and domain name rights has conferred wisdom to our practice.

In 2011 alone, we filed 629 trademark applications, which is quantifiably the largest number filed by any New England firm devoted exclusively to IP law.

International Presence

Because the international market is an important part of decisions, counseling clients requires the knowledge and resources to traverse the labyrinth of independent legal systems, treaties, and agreements. Our clients rely on us to help them develop cost-effective global strategies for determining where and when to protect their trademark assets. Executing aggressively on those strategies in our clients’ key markets and manufacturing countries, we use a well-established network of international associates to efficiently extend our reach world-wide.

This reach is particularly useful in anti-counterfeiting matters, as well as in coordinating world-wide clearance and registrations to protect trademarks in a broad range of industry sectors. 

Technical Expertise

Our clients count on us to apply our sophisticated technical backgrounds to the art of branding their products and services. Understanding the technology behind a client’s product or service brands allows us to develop and execute strategies that return strong business value.

Enforcement Experience

When it becomes necessary to enforce our client’s trademarks or trade dress, we create strategies on when and where to litigate, whether to seek arbitration or other ADR solution, and how to craft a winning trial strategy.

We have successfully handled numerous domain name disputes, and trademark and trade dress infringement cases, including a case which has become the leading authority in the U.S. Court of Appeals for the First Circuit on trade secrets, a decision cited as a leading case on trade dress and copyright law, and the largest jury verdict in a trade secret case in Massachusetts history.

Scope of Practice

Services we provide clients in this area include:

  • Strategic counseling on trademark clearance, selection and use
  • Acquisition, assignment, and sale of trademark rights
  • Drafting and prosecution of trademark registrations in U.S. and other countries
  • Advice on internet domain name selection, registration, and use
  • Trademark portfolio audits
  • Trademark litigation including oppositions and cancellations before the Trademark Trial and Appeals Board
  • Trademark issues on the internet (keywords, Second Life, etc.)
  • Advice on international anti-counterfeiting, anti-infringement, and anti-parallel trade and brand strategies
  • Licensing and development agreements
  • Collateral security agreements involving trademarks
  • Internet and domain name registrations, counseling, and dispute resolution
  • Infringement and due diligence opinions
  • Right to use and register opinions
  • Client training and trademark audits
  • Maintenance of trademark rights

Representative Industries Served

  • Apparel & fashion accessories
  • Athletic equipment
  • Chemical technologies
  • Computer hardware
  • Computer software
  • Consumer electronics
  • Electronic components
  • Financial services
  • Fluid treatment and purification equipment
  • Food, beverages & restaurants
  • Footwear
  • Hospitals
  • Infant & children’s products
  • Internet technologies
  • Kitchen and houseware products
  • Medical devices
  • Office supplies
  • Personal care products
  • Pharmaceuticals
  • Publishing
  • Semiconductors
  • Toys
Newsstand
September 2011 - The Doctrine of Aesthetic Functionality: What Trademark and Copyright Owners Can Learn from Betty Boop

August 26, 2011 - Belichick selects Wolf Greefield client Tootsie Roll's Junior Mints as number one choice

June 21, 2011 - Best Buy Criticized For Geek Claim

February 17, 2011 - WOLF GREENFIELD SEMINAR: Managing IP Risks: The Importance of Obtaining Freedom to Operate Guidance - presentation now available

January 2011 - Facebook: Trademarks, Fan Pages, and Community Pages

January 1, 2011 - Wolf Greenfield filed 2,749 patent applications and 688 trademark applications in 2010.

December 2010 - Wolf Greenfield was ranked #1 in number of patents filed and number of patent attorneys in Mass High Tech’s annual survey

August 25, 2010 - Presentation to entrepreneurs at MassChallenge

August 22, 2010 - Hunter Baker, Ed Gates and Chelsea Loughran presented at the American Chemical Society’s Fall National Meeting

June 28, 2010 - CLIENT ALERT— Supreme Court Leaves Door Open to Business Method Patents

May 7, 2010 - Wolf Greenfield Award as the #1 Boston trademark law firm for 2009

May 4, 2010 - Doug Wolf moderating roundtable discussion

March 11, 2010 - Doug Wolf presented to The National Foundation for Teaching Entrepreneurship, Inc.

March 1, 2010 - Protect your trademark in five crucial steps

January 29, 2010 - Will the iPad soon have a different name?

December 11, 2009 - CLIENT ALERT — USPTO Launches Two Pilot Programs for Accelerating Examination of Patent Applications

September 13, 2009 - Doug Wolf presented at the Intellectual Property Owners Association's annual meeting

June 2, 2009 - Wolf Greenfield named Boston’s most prolific trademark law firm by NameProtect

December 1, 2008 - CLIENT ALERT — ICANN Proposes Domain Name Expansion

June 12, 2008 - Amicus brief filed for In re Engage, Inc.

June 9, 2008 - Give Your Company a Distinct Name

June 6, 2008 - Protect IP in Online Worlds to Avoid Virtual Nightmares

June 6, 2008 - It's a Small World After All in Terms of Rising IP Risks

May 30, 2008 - Federal Court Dents RIAA Strategy Against File-Sharers

April 30, 2008 - Industry Insights: PTO's Potential Next Moves

April 14, 2008 - Tafas Decision Sparks Hope IDS Rules Also Doomed

April 10, 2008 - UMass Amherst Entrepreneurship Initiative

April 4, 2008 - Corporations Escape Patent Threat

February 7, 2008 - An Entrepreneur's Guide to the Intellectual Property Galaxy

January 17, 2008 - Intellectual Property Considerations in Entrepreneurship

January 6, 2008 - Technology Innovation Challenge

January 2008 - Licensing and Infringement in a Virtual World

November 16, 2007 - USPTO Issues New Guidelines for Determining "Obviousness" After Supreme Court's KSR Decision

November 16, 2007 - CLIENT ALERT — USPTO Issues New Guidelines for Determining "Obviousness" After Supreme Court’s KSR Decision

November, 2007 - Protecting Trademarks in China is No Easy Trick

November 1, 2007 - Update on Implementation of New USPTO Rules

October 31, 2007 - Court Stops Implementation of New USPTO Rules

October 25, 2007 - PRESS RELEASE — Protecting Your Brand Name in the Growing World Economy for SGMA

October 3, 2007 - Trademark Year in Review 2007

October 1, 2007 - To Protect Your Trademarks in China, Stay Extra Alert

September, 2007 - Trademarks Need to Create a 'Lasting' Impression

August 27, 2007 - PTO Issues Much Anticipated New Rules on Continuation Applications and Claims

July, 2007 - New Trademark Act Revises Standards of ‘Dilution’

June 20, 2007 - Intellectual Property in China: Balancing Risks With Rewards

February 21, 2007 - Intellectual Property: A New Source of Wealth and Power

January 24, 2007 - Acquiring Minds Want to Know: IP Due Diligence for Investors and Entrepreneurs

October 18, 2006 - Wolf Greenfield Webinar – "Digging Deep into Patent Interferences: What Every Counsel Needs to Know"

September 19, 2006 - Trademark Searching

September 4, 2006 - Trademark question: To Google or not to Google?

August 1, 2006 - CLIENT ALERT — New Rules on Accelerated Examinations

November 4, 2005 - CLIENT ALERT — .EU Domain Names Now Available

September 2005 - Wrap it up - Why you should license your technology and brand

April 14, 2005 - The "Use it or Lose it" Rule in Trademark Law

Q&A Booklet - Q&A on Licensing and Transactions

April 14, 2003 - The Use of Trademarks for Resale of Refurbished Goods

2003 - Is Your Corporate Identity at Risk? - How to Proactively Protect Your Trademarks, Domains, and Good Name