Trademark

Our Trademark & Brand Management team represents clients in trademark matters and disputes on a regional, national, and international basis. Our team offers domestic and international trademark registration services that rival services offered by boutique intellectual property firms, yet does so in a cost-effective manner. Each of the members of our Trademark & Brand Management team is highly skilled, efficient, pragmatic, and uncompromising in their approach to client service.

Brand Management

Our focus is on the client’s whole business. Brand protection is more than registering trademarks. We work with clients to select, protect and maintain their valuable trademark assets. We also help clients determine where to prioritize their resources, in which countries and for which marks, depending on their growth strategies and changing competitive environments.  We work closely with our clients on trademark policing and enforcement, assessing the value of their marks and avoiding infringement of or by their marks. Our brand management services include instituting corporate and legal processes for approval and review of new marks and marketing materials.

Portfolio Management

Our trademark practice, which comprises of a portfolio of more than 7500 active trademark records, is a mixture of both domestic and foreign activity. We manage portfolios for a broad spectrum of clients, from a small portfolio of domestic key marks for a consumer products company to an international portfolio of thousands of marks for a major food company.

International Expertise

For decades, we have served our clients’ international trademark needs through a global network of over 300 foreign associates representing more than 150 countries. We have solid working relationships with associates in all key markets, including Asia, Australia, South Africa, Europe, Canada, South and Central America, and the Caribbean.  

Many of our foreign associates are also our clients, and our relationships with them are based on mutual demands for responsiveness and cost-effective services. In addition, Gray Plant Mooty is a member of Multilaw, an international network of 65 law firms in over 150 commercial centers. With 5,000 members worldwide, we have access to local expertise in virtually every corner of the globe. We believe that developing strong foreign associate relationships is key to receiving the best service available at a minimum cost to our clients.

Licensing Agreements

Whether the purpose is risk management, tax planning, or business planning, we are often called upon to negotiate and draft all varieties of licensing agreements, including:

  • Trademark licenses
  • Know-how licenses
  • Trade secret licenses
  • Franchise agreements
  • Copyright licenses

Our licensing agreement experience includes:

  • Establishing an affiliate of a franchisor to hold all intellectual property used in the business, assigning the IP rights to that affiliate, and then preparing license agreements between the IP affiliate and the franchisor and third party distributors of products to franchisees
  • Licensing  trademarks owned by a company to its newly formed franchisor affiliate, which will sublicense the trademarks to franchisees
  • Licensing a manufacturer to produce and distribute branded  products through the licensor’s affiliated franchise outlets and to unaffiliated retail stores
  • Establishing offshore entities in conjunction with tax advisors to own and license trademarks and know-how to foreign affiliates and authorizing them to sublicense the trademarks and know-how to franchisees in different countries
  • Licensing a joint venture comprised of an affiliate of the trademark owner and a third party for the purpose of testing a franchise brand in a new market
  • Licensing a national chain of bowling alleys to convert its food service operations in each bowling alley to  a national pizza franchise brand
  • Negotiating and preparing a license agreement between a famous artist and the franchisor of a retail chain to use the artist’s works on the labels of products sold by the chain
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