Find Lawyers in Austin, Texas 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.
Bill Barber has devoted his legal career to the field of trademark law, focusing primarily on trademark litigation and policing, handling cases in federal courts across the U.S. and before the U.S. Patent and Trademark Office. Experienced in all aspects of litigation, including jury and bench trials as well as appeals, Bill also handles domain name disputes through ICANN’s domain name dispute resolution policies. He regularly assists clients with a wide range of trademark needs, includi...
Rodney Caldwell has practiced in the intellectual property field since 1970. His practice has been concentrated in the litigation of trademark and related intellectual property matters, alternative dispute resolution, and counseling, including advice on trademark licensing, franchising, and intellectual property/antitrust matters. He has represented large, mid-sized, and small business clients and has broad experience in litigation of trademark, trade secret, and related unfair competition ma...
Ross Spencer Garsson has more than 20 years of experience practicing intellectual property and technology law. Ross focuses his practice on intellectual property litigation, patent prosecution, and intellectual property portfolio management in a variety of technology areas, including chemical, nanotechnology, semiconductor and computer technologies. Ross has litigated numerous intellectual property disputes in State and Federal District Courts, in the U.S. Court of Appeals, and at the U.S. In...
Steven Highlander’s practice focuses on portfolio management for universities, non-profits and small to mid-sized corporate clients. Preparation and filing of patent applications, as well as prosecution of these cases, makes up the bulk of his docket. He also has considerable opinion experience for patentability, validity, infringement and inventorship disputes. Dr. Highlander has also been involved in over 20 interference proceedings, including several garnering Federal Circuit review....
"Their expertise in their field is matched only by their enthusiasm to help us succeed in ours. Foresight, execution, responsiveness and success are hallmarks of our experience with Bill Hulsey and his team."- Dr. Charlie D., Rochester, NY to Bill Hulsey Patent Lawyer (2019) "Thank you all Sooo much! I can't imagine being on this journey with anyone else. I look forward to continuing to work with you all for years to come!"- Ian P., Austin, TX to Bill Hulsey Patent Lawyer (2018) "Mr. Hulsey i...
Jerry is a founding member of Matheson Keys & Kordzik PLLC. Previously, Jerry had more than thirty years of legal experience with large law firms and as company general counsel. He has broad experience in representing technology, industrial and other intellectual property-based enterprises ranging from Fortune 500 companies, multinationals and universities to startups in both domestic and international matters. Jerry’s legal practice focuses on technology business, intellectual prop...
Chris Kindel has focused his practice on intellectual property trademark and copyright matters since he began his legal career in 2001. His experience crosses a wide range of industries including consumer and luxury goods, retail sales, hotel services, music and entertainment, pharmaceuticals, software, financial and consulting services and information technologies industries. Chris has particular expertise assisting clients on trademark and copyright licensing and transactional matters, rang...
Wendy Larson practices trademark law with a focus on litigation. She specializes in issues particular to the internet, including cybersquatting and brand protection challenges involving social media platforms and smartphone applications, keyword advertising, service provider liability, and personal jurisdiction relating to foreign online actors. She practices in federal court, before the Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB), and with dispute resolution s...
Jered Matthysse specializes in trademark law with a primary focus on litigation and policing, frequently handling cases in federal courts throughout the U.S. and before the U.S. Patent and Trademark Office Trademark Trial and Appeal Board. Jered has extensive experience in mediation and regularly assists clients with trademark policing strategies and programs. Jered has a background in appellate practice, having served as a law clerk for the U.S. Court of Appeals for the Seventh Circuit. Jere...
Kevin J. Meek focuses his practice on patent litigation, prosecution and licensing. He is the managing partner of the Firm’s Austin office. Kevin has extensive experience litigating disputes involving intellectual property rights in a wide variety of advanced technologies in federal courts across the country, in the International Trade Commission and in post-grant proceedings before the US Patent and Trademark Office. Read full biography: https://www.mwe.com/people/kevin-j-meek/
Steve Meleen has specialized in trademark law since he began his career with Arnold White & Durkee in 1996. Steve handles all aspects of trademark and unfair competition law, and primarily focuses on trademark litigation. He is also experienced in copyright counseling and litigation. Steve has been actively involved in internet developments and policies affecting trademark owners, and devotes a significant portion of his practice to internet-related trademark issues. He has served as Chai...
AREAS OF CONCENTRATION Intellectual Property and Technology Litigation Licensing Prosecution Biotechnology EXPERIENCE Dr. David Parker plays both offense and defense when protecting clients’ intellectual property assets. Dr. Parker places a premium on the strategy and management of intellectual property portfolios. From the moment of innovation to the ultimate marketplace, Dr. Parker maps out a course designed not only to provide protection for future manufacturing and marketing, but al...
Lou Pirkey is a founding partner of trademark specialty firm Pirkey Barber. Lou Pirkey has specialized in trademark law, primarily trademark infringement litigation and counseling, for well over 40 years, and is one of America’s most highly recognized authorities in the field. He was heralded as "legend of the field" in the 2014 World Trademark Review 1000 ind in 2012 as a "a groundbreaking trademark lawyer undoubtedly practicing at the highest level.” Chambers USA guide to Americ...
Margaret J. Sampson, PhD, focuses her practice on global, strategic intellectual property transactions and patent counseling surrounding the areas of life sciences, pharmaceuticals, research tools and medical devices. Life sciences and technology clients turn to her for evaluating, structuring, negotiating and documenting major transactions. Read full biography: https://www.mwe.com/people/margaret-j-sampson-phd/
For more than 25 years, Shannon Vale has specialized in trademark and copyright law, intellectual property transactions and due diligence, and right of publicity law. Prior to joining Pirkey Barber, Shannon was a Trademark partner in the Austin office of Fulbright & Jaworski and a shareholder in Arnold, White & Durkee. Shannon also spent five years as the head of personal management firms that directed the careers of major label and major independent label recording artists based in t...
Aashish Kapadia represents clients in patent litigation, post-grant trials and patent prosecution. His background in electrical and computer engineering gives him strategic insight into his clients’ vital technologies. He offers multifaceted representation across all phases of complex patent litigation, from pre-suit strategy and early motion practice through claim construction, discovery and summary judgment. He regularly represents clients in inter partes review proceedings at the US ...
Our Methodology
Recognition by Best Lawyers is based entirely on peer review. Our methodology is designed to capture, as accurately as possible, the consensus opinion of leading lawyers about the professional abilities of their colleagues within the same geographical area and legal practice area.
The Process
Best Lawyers employs a sophisticated, conscientious, rational, and transparent survey process designed to elicit meaningful and substantive evaluations of the quality of legal services. Our belief has always been that the quality of a peer review survey is directly related to the quality of the voters.