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Trademark

HKW has a significant practice in all areas of trademark and domain name law, including domestic and foreign trademark prosecution, trademark clearance, licensing, enforcement of trademark and domain name rights, and litigation. Clients rely upon HKW to handle their trademark prosecution matters before the U.S. Patent and Trademark Office (PTO) in matters ranging from basic applications to complex issues such as appeals to the PTO’s Trademark Trial and Appeal Board following an examining attorney’s refusal to register a mark.

Initial Trademark Search

At the client’s request, HKW will do preliminary searches of the PTO database of registered trademarks and service marks to provide a preliminary assessment of the chances for registration. This work is billed to the client at normal firm billing rates. HKW lawyers have performed this kind of basic searching and related counseling for Fortune 500 companies, for some of the largest, most successful private brands in the U.S., and for mid- and small-sized companies looking to create a national brand.

Advanced Trademark Search

At the client’s request, HKW will refer a matter to a national or international search firm for a detailed trademark search and analysis. The third party searches range from $500 up to in some cases over a thousand dollars per search, depending upon the complexity of the mark, and the comprehensiveness of the databases to be searched. HKW lawyers have experience in interpreting these search results, fielding client questions, and helping to decide whether the mark, if applied for, would likely be granted a federal or state registration. This work is billed to the client at normal firm billing rates.

Applications

Once a client has made a decision to prosecute a trademark, HKW requires a one time flat fee payment for preparing, filing and prosecuting a one-class application (plus an additional fee for each additional class). This fee is inclusive of all initial application filing and mailing fees required by the PTO, which are all the fees likely to be encountered by the registrant – except in the cases of necessary extension fees, and fees associated with filing statements of use (applicable only in the case of “intent to use applications”) at the conclusion of a successful registration.

Oppositions

When a client applies for a trademark, there is always a chance that a third party will file an opposition to the registration. These opposition proceedings are contested matters and are not handled within the basic application fee. Instead, they are handled as contested matters and billed to the client as a reflection of the number of professional hours expended times the applicable professional hourly rate. Trademark and Trade Dress Dispute Resolution and Litigation HKW lawyers have substantial experience representing plaintiffs and defendants in trademark and trade dress disputes. We have represented clients successfully in resolving these disputes in arbitrations, including ICANN domain name dispute arbitration, through private mediations using experienced trademark lawyers as mediators, through one-on-one negotiations with an adverse party’s counsel, and, where necessary, through the courts. We advise our clients to carefully consider all of these options because often the successful resolution of these disputes is critical to their business interests. We have been trusted to litigate such well-known trademarks as “HOOTERS” and “NAPA.”

International

HKW lawyers have substantial experience representing our clients’ interests abroad. We do this through a vast network of contacts that we maintain with skilled trademark firms in over one hundred countries. Currently, we oversee the registration and maintenance of our clients’ trademarks in over 100 foreign countries. From time-to-time, HKW’s clients have had trademark disputes in foreign countries. Where this has happened HKW has overseen and managed the dispute, working hand-in-hand with our associated foreign trademark counsel.

Practice Group:

Steven G. Hill
Scott A. Wharton

Major Cases:

Jerry Garcia Estate LLC v. Moe’s Southwest Grill, LLC et al., United States District Court for the Northern District of Georgia (pending suit for false suggestion of endorsement and theft of publicity rights of the late musician Jerry Garcia).

Hooters of America v. Winghouse Restaurants, United States District Court for the Middle District of Florida (2004) (suit for trade dress infringement, featured in Nation’s Restaurant News Magazine and on MSNBC’s “Abram’s Report”). Currently on appeal to the United States District Court for the Eleventh Circuit.

Urantia Foundation and The Urantia Book Fellowship (2002) (seventeen hour successful mediation of numerous Internet and commercial trademark disputes).

Michael Foundation v. Urantia Foundation, United States District Court for the Western District of Oklahoma (2001) (In case brought under, inter alia, Anti-Cybersquatting Consumer Protection Act (ACPA) for recovery of Internet domain names wrongfully registered by defendant, successfully defended validity of several registered U.S. trademarks and settled during jury trial with recovery of all Internet domains at issue).