Find Lawyers in Indianapolis, Indiana for Trademark Law
Practice Area Overview
A mark is deemed protectable if it is distinctive, meaning that it is capable of identifying the source of a particular good. In determining whether a mark is distinctive, trademark law uses four separate classifications based on the relationship between the mark and the associated product: (1) arbitrary or fanciful (marks such as KODAK® and APPLE® that bear no inherent relationship to their associated products); (2) suggestive (marks such as COPPERTONE® that evoke a characteristic of the associated products); (3) descriptive (marks such as HOLIDAY INN® that directly describe a characteristic or feature of the associated products); or (4) generic (terms that describe the general category of the associated products, e.g., “phone,” “keyboard,” etc.). The first two categories of marks are protectable without proof that they have acquired distinctiveness in the minds of consumers, while descriptive marks require evidence that the consuming public has come to associate the term with its specific source. Generic terms are never protectable as trademarks, as they are necessary for general identification of a particular product category.
Once a trademark owner has acquired protectable rights in a mark, it may enforce its rights by preventing the use and/or registration of all subsequent infringing marks. The standard for infringement in the United States is “likelihood of confusion,” which means that consumers viewing the respective marks on their associated products are likely to be confused as to the source of those products or as to the sponsorship or approval of such products. In other words, determining infringement is not as simple as merely comparing the marks to see if they are identical; rather, courts will employ a multifactor test. While the precise factors vary slightly by jurisdiction, courts generally consider the following elements: (1) the strength of the plaintiff’s mark; (2) the relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of care exercised by the typical purchaser; (7) the defendant’s intent; and (8) the likelihood of expansion of the product lines.
Protecting and enforcing trademarks is critical to the success of any company. Trademarks allow consumers to distinguish a company’s products and services from those of its competitors, and also serve as indicators of the quality of such products and services. Indeed, many companies’ trademark portfolios constitute the majority of the value of their businesses. Please consult with an experienced trademark lawyer to explore how to best to protect your company’s trademarks.
As co-chair of the firm's Life Sciences group, Bradford Addison has successfully prosecuted more than 10,000 original and complex patents over the course of his career. With a Ph.D. in pharmacology, Brad understands even the most cutting-edge science and technology behind innovation, as well as how to realize the true value of a commercially viable patent. Brad prepares and prosecutes patent applications in the chemical and biotech areas, including pharmaceuticals, molecular biology, instrume...
For over 35 years, Spiro has earned a reputation as an aggressive, trial and appellate patent and intellectual property litigator. He has successfully resolved cases involving hundreds of millions of dollars and is known for seeking the most efficient and cost effective path to either an amicable settlement or a win on the merits.
Mr. Coles is an influential leader in advising businesses on all types of technology and intellectual property legal issues, including patent, trademark, copyright, trade secret, intellectual property transactions, and intellectual property litigation. He has vast experience drafting and negotiating agreements with intellectual property issues and resolving disputes involving technology and intellectual property matters. He helps clients assess their intellectual property assets through consu...
A member of the firm's Intellectual Property Department and Life Sciences practice group, Angela is instrumental in procuring IP rights in the U.S. and worldwide for client inventions. Angela's practice includes preparing contractual agreements and opinions. She also performs IP due diligence in order to protect her client's interest during sales, mergers and acquisitions. In addition, Angela assists clients with procuring trademark and copyright registrations to protect their intellectual pr...
Ken advises clients in all areas of intellectual property law with an emphasis in patent matters, and infringement and validity evaluations in chemical, pharmaceutical, biotechnological and medical device arts. With a focus on intellectual property prosecution, counseling, licensing and litigation-related issues, Ken’s extensive experience includes matters involving worldwide portfolio management, diligence in licensing and acquisition, US interferences, US reissues, US reexaminations a...
Chair of the firm’s Intellectual Property Department, Julia Gard’s practice includes searching and clearing trademarks, prosecuting domestic and international trademark applications, IP licensing, and litigation before the TTAB. At every turn, Julia serves as a mark maximizer by ensuring her client’s valuable IP assets remain intact and commercially viable. Julia’s experience ranges from searching, clearing, filing and registering trademarks, service marks and domain n...
Patent attorney Ron Henderson advises on domestic and international patent protection in a wide range of industries, including the healthcare industry. Having both electrical and mechanical engineering degrees, Ron understands the technology behind sophisticated products and systems and also the business objectives that such intellectual property can help achieve. By focusing on patent procurement, protection and development as a critical component of his clients’ strategic business pla...
A veteran intellectual property lawyer, Tom concentrates his practice on the strategic development and management of IP portfolios with special emphasis on providing business-focused legal advice. Tom assists clients in evaluating IP coverage, protecting core IP assets, handling Hatch-Waxman cases, domestic and international patent prosecution, and preparing infringement, non-infringement, freedom to operate, and validity opinions. Tom`s clients include major pharmaceutical, health science an...
Intellectual property litigator, counselor and problem-solver Dwight Lueck delivers solutions that best achieve his client’s objectives — whether by diplomatic negotiation, favorable settlement, trying the case in court or before the Trial and Appeal Board, or by taking proactive measures to avoid a dispute altogether. Dwight litigates intellectual property disputes involving trademarks, trade dress, domain names, copyrights and intellectual property licenses. The subject matter o...
Dan focuses primarily in litigation and licensing, as well as IP portfolio evaluation and clearance. As a patent and trademark attorney, Dan helps clients protect their ideas and market share in the U.S. and internationally. He has represented clients in a variety of matters, including those involving industrial, medical, surgical and pharmaceutical technologies, automotive and trucking devices, wireless phone technology, computerized systems, website content, industrial chemicals, and packag...
Prior to joining Barnes & Thornburg, Brian served as in-house counsel to an intellectual property consulting and investigations firm where he advised Fortune 1000 corporations on complex IP, anti-counterfeiting, and brand protection strategies. Brian is a member of the International Association of Privacy Professionals (IAPP) and serves as Subcommittee Chair for the inaugural Data Protection Committee of the International Trademark Association (INTA). He has been appointed to the Terralex...
Bill represents clients in all phases of intellectual property litigation, including actions filed throughout the United States in many popular forums including the Eastern District of Texas and the Federal Circuit. His litigation experience includes matters involving software, electrical, mechanical arts, computer telephony, complex electrical circuitry, robotic navigation, aviation tracking, medical monitoring, and mobile devices. Bill also advises clients on the procurement and strategic d...
As a prosecutor and litigator, Charlie represents and counsels clients in various aspects of patent, trademark and copyright law. Charlie helps clients structure their internal efforts to protect their ideas, processes and products. His experience includes searching and prosecuting patent applications, clearing and registering trademarks and copyrights, licensing, and enforcing and defending intellectual property rights both in the U.S. and internationally. He represents a broad spectrum of c...
A tenacious advocate and litigator, Deborah Pollack-Milgate is known for her ability to act quickly to chart the optimal path for the clients she serves. Fearless and disciplined, Deborah delivers laser sharp focus that supports and protects each client’s unique business objectives. Deborah represents businesses of all sizes and individuals in patent, trade secret, trademark and complex commercial litigation, including antitrust and contract litigation. Deborah is adept at providing her...
Dennis Schell is an experienced fractional chief intellectual property counsel with expertise in serving both startup and mature small to mid-sized companies across the United States, spanning from the East to the West Coast. In addition to that, he contributes to national and local not-for-profit leadership and governance advising roles. His background includes a lifelong passion for aviation, with prior experience as a military aviator and control systems engineer. His key strengths lie in ...
Chuck helps businesses develop, protect, and manage their intellectual property portfolios both domestically and internationally. For nearly 20 years, Chuck has obtained patent protection for his clients` inventions in a wide range of technologies including those related to automotive, hybrid vehicle, lubricant filtration, control systems, electronic, computer/software, material handling, diagnostic, and medical device technologies. He knows that a client`s intellectual property portfolio mus...
As a leader, Scott serves on the firm’s management committee and as a member of the firm's IT Oversight Committee. As a practitioner, Scott prepares and prosecutes patent applications through the U.S. Patent and Trademark Office (USPTO) and counsels clients on the protection and development of IP. Scott is known for his experience in creating the strategies his clients need to succeed in their respective markets. Having been involved in patent portfolio development and management for a ...
David A. W. Wong is a partner with Barnes & Thornburg where he is a member of the Intellectual Property Department and Chairman of the Internet and Technology Law Group. David's practice focuses on Internet law, technology, media, intellectual property counseling, risk management, prosecution, policing and enforcement. He regularly advises clients on commercial and intellectual property matters, such as trademark, copyright, defamation, trade dress, advertising, right of publicity, trade ...
Blake`s practice focuses on intellectual property litigation in both federal court and administrative proceedings at the USPTO. He has worked on all stages of disputes, from pre-filing investigations and enforcement letters through pleadings, motion practice, discovery, trial, and appeal. Blake also maintains active patent and trademark prosecution dockets, including serving as U.S. counsel for overseas companies and attorneys. Through searching, investigations, legal research, and writing, B...
As an inventor of an issued U.S. Patent obtained during Mike’s time in engineering, Mike understands a client`s perspective in dealing with intellectual property matters. His practice encompasses all areas of intellectual property law, including identifying, procuring, and enforcing patents, trademarks, copyrights and trade secrets. Specifically, Mike has significant experience in preparing and prosecuting medical device and mechanical patent applications in the U.S. and abroad; providi...
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