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  1. Capabilities

Trademark Litigation, Prosecution & Brand Protection

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  • Overview
  • Experience

Key Contacts

Jennifer Golinveaux
View Our Full Team

We help clients build powerful brands by using innovative, cost-effective development, maintenance, policing, and protection strategies. We are particularly adept at helping clients define, secure rights in, and enforce their brand assets and in developing effective approaches for global trademark and domain-name portfolio management.

Several factors set our Trademark Practice apart from our competitors’ practices. First, we take the time to learn our clients’ businesses. We pride ourselves on learning the nuances of our client’s business in a way that allows us to provide sophisticated and strategic counseling, always keeping in mind the client’s business goals.

Second, in addition to attorneys experienced in trademark prosecution and domain-name management, our Trademark Practice features seasoned litigators. Unlike many other practices, we do not need to “hand off” dispute matters to a separate team if a matter reaches litigation. This also means that we approach clearance, prosecution, and registration with the critical eye of a litigator, which allows us to provide practical advice informed by our years of experience when we are assessing the availability and risk of new marks.

Key Contacts

Jennifer Golinveaux
View Our Full Team

Areas of Focus

We take a global approach to the adoption and enforcement of trademarks. We not only oversee U.S. and international trademark portfolios worldwide, we also search and clear trademarks for global use and ensure their protection by successfully prosecuting and defending our clients’ marks. We also have a keen view on the interaction between trademarks and digital media, keeping in mind the effects of social media and domain names when we clear marks, as well as using our contacts and reputation in the digital media industry to eliminate issues for our clients.

We are well versed in the full spectrum of trademark disputes. We have a thriving practice before the U.S. Patent and Trademark Office, the Trademark Trial and Appeal Board, and federal district courts, handling a wide range of trademark inter partes proceedings and litigation in the United States and beyond. In addition to trademark, trade-name, service-mark, and trade-dress infringement and dilution, our attorneys regularly obtain winning outcomes for clients in connection with false advertising, unfair competition, consumer protection, anti-cybersquatting, and other disputes involving violations of the Lanham Act.

We not only manage domestic and foreign trademark prosecution deadlines, but also assist clients in determining when searches should be conducted, when applications should be filed, and when existing registrations should be renewed. We manage domain-name portfolios for clients, including country code top-level domain names, legacy gTLDs, and new gTLDs. Our lawyers are particularly skilled at helping clients develop a branding architecture that maximizes the power of the brand cost effectively. The firm has in-house trademark searching capabilities, allowing for same-day screening of the availability of proposed trademarks.

In jurisdictions where we do not have an office, we manage our clients’ international portfolios through a trusted network of foreign associates. We know these foreign associates personally and have worked with many of them for years.

We have a leading internet enforcement practice. Our clients in this space span many industries, from financial services companies to consumer packaged goods manufacturers. We have represented dozens of applicants and non-applicants in the ICANN new gTLD process. We assist our clients with lodgment of their marks within the Trademark Clearinghouse; identification of second levels to be defensively registered in the new gTLDs; and in ACPA, UDRP, and URS proceedings to ensure speedy recovery or take-down of abused domain names. We also work with our contacts at hosts and registrars to obtain urgent take-down of infringing internet content. Our attorneys are also versed in the nuances of protecting and enforcing brand assets in the Web 3.0 space and the emerging NFT industry.

Our integrated team of commercial attorneys, IP lawyers, and litigators provides great value to our licensing clients. We deliver strategic advice tailored to each contract to help our clients build value through the licensing of IP assets. 

Learn More

Related Capabilities

Intellectual Property
Advertising Litigation
Patent Litigation
Litigation/Trials
Commercial Litigation & Disputes
Trade Secrets, Non Competes & Restrictive Covenants
Copyright-Infringement Litigation
IP Licensing & Due Diligence
Food & Beverage
Financial Services
Retail & Luxury
Technology, Media & Telecommunications

Recent Experience

American Multinational Hedge Fund and Financial Services Company Trademark Counseling
Winston Represented Health Brands Company in Trademark Infringement Case
Defended Generic Drug Manufacturer in Trade Dress Infringement Case
Driscoll's Trademark Counseling

Notable

Recognized in three states: California, New York, and Illinois

WTR 1000 2024

More defensive IP trials than any other national law firm

Lex Machina 2019–2023

“…the firm is a well-oiled machine for tricky disputes and leverages a masterful strategic understanding of trademark portfolios.”

WTR 1000 2023
WTR 1000 2024

Recognized in three states: California, New York, and Illinois

Lex Machina 2019–2023

More defensive IP trials than any other national law firm

WTR 1000 2023

“…the firm is a well-oiled machine for tricky disputes and leverages a masterful strategic understanding of trademark portfolios.”

Related Insights & News

View All Insights & News
Recognitions
Winston Trademark Team Recognized in the WTR 1000 2025 Rankings

January 29, 2025

Blog
No Time for Cat-and-Mouse Games: Another Federal Court Allows for Service of Patent Infringement Complaint via E-Mail on Foreign Defendants Residing in Mainland China, Skirting Hague Convention Procedures

October 14, 2024

Client Alert
USPTO Releases Updated Guidelines for AI-Related Patent Eligibility

July 22, 2024

Recognitions
Winston & Strawn Attorneys Named as 2024 IP Stars

May 31, 2024

Recognitions
Winston & Strawn Trademark Team Recognized in the WTR 1000 2024 Rankings

February 6, 2024

Webinar
Decoding AI Law

January 24, 2024

Blog
Lexis+ NFT Litigation and Regulatory Proceedings Tracker

January 17, 2024

Client Alert
Supreme Court Relegates VIP Products’ Dog Toys to the Dog House

June 27, 2023

Blog
Bored Apes Earn Victory in Trademark Suit

May 1, 2023

In the Media
LeElle Slifer Addresses New Claims Filed by Megan Thee Stallion Against 1501 Certified Entertainment

April 14, 2023

Sponsorship
Winston & Strawn Sponsors 2023 USC Gould School of Law Intellectual Property Institute

March 20, 2023

Recognitions
Winston & Strawn Trademark Team Recognized in WTR 1000 2023 Rankings

February 21, 2023

Recognitions
Winston Trademark Team Recognized in the WTR 1000 2025 Rankings
January 29, 2025
Blog
No Time for Cat-and-Mouse Games: Another Federal Court Allows for Service of Patent Infringement Complaint via E-Mail on Foreign Defendants Residing in Mainland China, Skirting Hague Convention Procedures
October 14, 2024
Client Alert
USPTO Releases Updated Guidelines for AI-Related Patent Eligibility
July 22, 2024
Recognitions
Winston & Strawn Attorneys Named as 2024 IP Stars
May 31, 2024
Recognitions
Winston & Strawn Trademark Team Recognized in the WTR 1000 2024 Rankings
February 6, 2024
Webinar
Decoding AI Law
January 24, 2024
Blog
Lexis+ NFT Litigation and Regulatory Proceedings Tracker
January 17, 2024
Client Alert
Supreme Court Relegates VIP Products’ Dog Toys to the Dog House
June 27, 2023
Blog
Bored Apes Earn Victory in Trademark Suit
May 1, 2023
In the Media
LeElle Slifer Addresses New Claims Filed by Megan Thee Stallion Against 1501 Certified Entertainment
April 14, 2023
Sponsorship
Winston & Strawn Sponsors 2023 USC Gould School of Law Intellectual Property Institute
March 20, 2023
Recognitions
Winston & Strawn Trademark Team Recognized in WTR 1000 2023 Rankings
February 21, 2023
View All Insights & News
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