Find Lawyers in Massachusetts, United States 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.
Steve Abreu takes a pragmatic approach to trademark clearance, registration and enforcement to help a wide range of enterprises meet their intellectual property protection and business goals. Steve’s clients are varied and include renowned institutions of higher learning, consumer and medical product companies, and specialty magazines. He also represents well-known manufacturers of pharmaceuticals and biotechnology products. Steve’s strategic outlook on trademark and copyright pro...
Robert Asher leads the post-grant proceedings team at Sunstein leveraging his deep experience in patent litigation and patent prosecution. He is an astute and accomplished advocate for inventors and businesses affected by patents. Clients have been richly rewarded from Bob’s litigation guidance, appellate advocacy and patent prosecution work. He is the chair of Sunstein’s PTAB Litigation practice group. Our team won a $14.6M verdict for patent infringement of infrared thermometer ...
Ilan Barzilay is an intellectual property practitioner specializing in obtaining and enforcing patent rights. Ilan leads a team of attorneys that procures patents for clients ranging from technology startups and research institutions to established companies and multinational corporations. He is a trusted advisor to clients seeking meaningful patent protection crafted to align with important business goals. His practice also includes handling contentious matters in the federal courts and befo...
Michael Brodowski is a patent lawyer and partner in the Boston office of Burns & Levinson LLP. Michael has two decades of experience counseling clients regarding the establishment and exploitation of patent rights in the United States and abroad to support clients’ business objectives including patent reexamination, reissue, and opposition proceedings. He also advises clients on avoiding the patent rights of others, and in connection with technology licenses and agreements, and pate...
Ronald Cahill is well-respected for his work with clients of virtually all sizes to solve their most challenging intellectual property problems. His advice ranges from designing protection that maximizes the value of the client’s investment in research and development to applying that IP in court and in the marketplace, which allows clients to realize that value. With decades of courtroom experience, Ron has led trial teams in patent infringement cases around the country. He also conduc...
Kevin Canning is Counsel in the Technology and Life Sciences groups, and Medtech practice at Goodwin. Mr. Canning concentrates his legal practice in representing medical technology and software technology clients. Mr. Canning has extensive experience with patent matters for a wide range of technologies. He assists clients with the development and management of their patent portfolios and provides client counseling.
Rob Carroll is a partner in Goodwin’s IP Litigation group, and a member of the firm’s Antitrust Litigation and Business Litigation practices and is a member of the firm’s Life Sciences Disputes group. World Trademark Review describes him as a “[t]errific advocate” with “a glittering track record in contentious mandates. He has the ability to filter down all possible arguments to the ones viable in court and can then use his superior judgment to pick a winni...
Jenny Chen, Ph.D. counsels both US and international clients in a wide-array of patent-related matters in the life science space, including prosecution, opinion, due diligence, licensing and post-grant proceedings. Her practice focuses on matters including antibodies, cell therapies, gene therapies, small molecule therapeutics, diagnosis and pharmaceutical formulations. She is particularly experienced in strategic counseling on life cycle management of both biological and small molecule produ...
Sarah is a Fellow in the American College of Trial Lawyers. Over the last dozen years, she has led 16 patent infringement, trade secrets and invalidity trials (ten jury trials, six bench trials) across several jurisdictions, including the federal courts in Massachusetts, Florida, Delaware, Colorado, California and Texas. Read full biography: https://www.mwe.com/people/columbia-sarah-chapin/
Larry Green is a patent lawyer partner at Sunstein and is highly experienced in handling pharmaceutical, biotechnology and medical device patent interferences and litigation, patent and trademark prosecution, and clearance opinions on validity, infringement and patentability. His practice is focused on all aspects of intellectual property in various technologies, including medical devices and mechanical technologies. Larry has had a long history of successfully handling matters before the Pat...
Jason Kravitz heads up Nixon Peabody's IP Litigation group. Jason is a trial lawyer and his practice focuses on patent, trademark, copyright, trade secret, privacy, and false advertising disputes. He has litigated cases involving a broad range of technologies, including software and hardware, business methods, personal care products, wireless devices, footwear, dental implants, and online advertising applications. What do you focus on? I focus on litigating and resolving intellectual property...
Tim’s extensive experience includes patent office litigation matters such as patent interference proceedings, Inter Partes Review and reexamination proceedings. He has shaped and executed winning strategies in patent litigations. In helping clients achieve their business goals, Tim devises strategies for maximizing the value of patent portfolios for litigation, licensing or acquisition. He develops and implements strategies for protecting his clients’ key technologies and for avoi...
Rory Pheiffer works with clients to develop patent portfolios, domestically and abroad, that align with their business goals. He also counsels clients on patent opinion and product clearance matters, IP due diligence issues on the buyer and seller side, license negotiations, and trademark portfolio growth and enforcement in conjunction with building the client’s brand. Clients rely on Rory’s technical knowledge, which he honed while earning a degree in mechanical engineering from ...
David Resnick is the team leader of the Patent group and he works with startup and established companies, as well as major U.S. research institutions, to develop comprehensive patent strategies to protect their intellectual property. What do you focus on? My practice is focused on strategic portfolio management, patent prosecution, transactional matters and associated client counseling. I manage the patent portfolios of some of the leading U.S. research institutions and domestic and internati...
Benjamin M. Stern is a partner in Nutter’s Litigation Department. He focuses his practice on patent litigation and has extensive trial experience representing multinational and entrepreneurial companies in federal and state courts nationwide, as well before the U.S. International Trade Commission (ITC) and in inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB).With a strong background in both intellectual property litigation and complex commercial litig...
Bruce Sunstein’s strategic approach to intellectual property has enabled a wide range of enterprises to achieve dominant patent positions in their markets. Patents issuing on applications that Bruce has handled have been enforced for 8- and 9-figure infringement recoveries. He is a patent & IP strategist for market leaders and startups in diverse industries including computer hardware and software, electronic circuits and systems, communications and speech, medical devices, pharmace...
Lisa Tittemore is a partner at Sunstein and the Chair of the Litigation Practice. Lisa is a seasoned litigator, serving as lead counsel in patent, trademark and copyright litigation in federal courts throughout the United States. Lisa has extensive experience in intellectual property matters, providing strategic counsel to clients on both domestic and international issues and guiding the firm’s efforts in protecting and enforcing clients’ valuable brands and ideas. Lisa is a membe...
Alexander D. Augst advises clients, particularly in the medical device and life sciences industries, on a variety of intellectual property issues, including worldwide patent portfolio development and strategy, patent prosecution, due diligence and freedom to operate analysis, and litigation support. Alexander helps clients identify strengths and weaknesses, and opportunities to minimize threats and maximize revenue using their patent portfolios. Read full biography here: https://www.mwe.com/p...
Karishma Jiva Cartwright focuses her practice on drafting and prosecuting software-based patent applications, including machine-learning algorithms and AI systems, for large and small corporations, startups, and universities. She also has experience in drafting and prosecuting patent applications in the U.S. and foreign jurisdictions for the following technology areas: business methods, financial methods, network communications, electronics, medical devices, and mechanical systems. Before joi...
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