Practice Areas > Trademark Practice

Your brand is one of your most important assets, and Sunstein’s trademark practice puts every effort into protecting and enforcing it around the globe. Our trademark attorneys file and prosecute hundreds of applications every year in the US and many foreign countries. Our extensive record of protecting brands allows us to tailor trademark policing strategies that suit your needs and your budget.

Experience in

Domestic and international portfolio development

  • Applications
  • Responses to Office Action
  • Madrid Protocol applications
  • Statements of Use
  • Renewals and Declarations of Incontestability

Contentious Trademark Issues

  • Drafting and responding to cease and desist letters
  • Oppositions
  • Cancellations
  • Federal Court infringement actions
  • Seeking injunctions and declaratory judgments

Internet disputes

  • Cybersquatting
  • Domain-name disputes
  • Online advertising
  • Social media
  • DMCA take-downs

Copyright cases

  • Publishing and illustrating
  • Assignment and licensing
  • Fair use
  • Software development
  • Work for hire

Specific industry expertise includes:

  • Pharmaceutical brands
  • Medical devices
  • Apparel and footwear companies
  • Educational institutions
  • Start-up companies
  • Financial institutions
  • Non-profit organizations
  • Restaurants and food companies
  • Computer software brands
  • Internet-of-things technology
  • Service providers

Trademark Practice Group

Representative trademark clients

’47 Brand, LLC

’47 is one of the most trusted names in licensed sports merchandise in the United States. Products bearing ’47’s marks are sold in sports stadiums, team stores and in thousands of retail stores throughout the United States, Canada, Europe and Asia. We have assisted ’47 for over a decade, including in connection with its corporate re-branding from Twins to ’47, and provide both trademark prosecution and enforcement services worldwide. We successfully represented ’47 in its opposition to another party’s application to register a 47 in a circle, obtaining a judgment from the USPTO Trademark Trial and Appeal Board in ’47’s favor.

Hologic

A global leader of healthcare products, Hologic strives to make advances toward greater certainty for its customers by providing them with cutting-edge technology that makes a real difference. Working together with Hologic’s internal counsel, Sunstein helps Hologic protect its core brands around-the-world by developing and implementing a pragmatic and effective strategy focused on sound principles of brand protection.

The Charles Stark Draper Laboratory, Inc.

Draper is a world-renowned not-for-profit research and development company. Headquartered in Kendall Square, Cambridge, Massachusetts, Draper focuses on the design, development and deployment of advanced technological solutions for the world’s most challenging and important problems. We work with Draper protecting its valuable trademarks, patents and other IP.

Hexagon

Sunstein provides US-based strategic trademark advice to Hexagon AB, of Sweden, and Hexagon’s affiliated companies in the US and around the world. Hexagon is a leading global provider of information technology solutions in the geospatial and industrial landscapes. Sunstein employs a pragmatic approach to trademark policing and prosecution to secure registration of Hexagon’s import house marks and product marks.

Sage Therapeutics, Inc.

Sage Therapeutics is a biopharmaceutical company working to develop novel medicines, based in Kendall Square, Cambridge, Massachusetts. We work closely with Sage in connection with the launch of its first products. We assist Sage with the development, protection, and enforcement of its trademarks, both in the U.S. and abroad. As part of these efforts, we also represent Sage in federal court litigation.

Med-El Elektromedizinsche Gerate

We represent Med-El in connection with its trademark matters worldwide, including contentious and non-contentious matters. Headquartered in Austria, Med-El is the industry leader in implantable hearing solutions, and has a strong tradition of advancing the technological and scientific foundation in the field of hearing implants. Our firm has a long term relationship with Med-El acting as their trademark counsel for adversarial and non-adversarial matters, as well as with the development of its patent portfolio.

Clients Abroad

Sunstein assists many clients outside the United States, including numerous intellectual property firms working in Japan, Germany, England and elsewhere. These firms value Sunstein’s guidance and support for their clients’ needs in the United States and abroad. Our expertise and team-based approach help de-mystify the complexities associated with the U.S. trademark application process, whether an applicant is filing a trademark application directly with the USPTO or through WIPO via the Madrid Protocol. Our forward-thinking approach is tailored to avoid problems frequently encountered in the application process. We also excel in assisting non-U.S. attorneys in developing registration strategies when they receive a substantive refusal of their client’s U.S. trademark applications. In situations like these, many clients abroad benefit from our experience and institutional knowledge.

Intersystems

Intersystems Corporation is a 40-year-old computer software company that, in conjunction with its application partners, has been developing and licensing computer software for large entities, such as governments, large corporations and institutions that is used for building applications, managing databases and integrating data primarily in the healthcare field. Sunstein attorneys have worked with in-house attorneys at Intersystems to build a large international portfolio of registered trademarks covering each of its software products. We continually monitor trademark usage by its competitors and oppose attempts by competitors to use and/register confusingly similar trademarks worldwide.

Eastern Bank

Eastern Bank is the largest and oldest mutual bank in the United States, which is distinguished in the industry by its focus on community growth and technological innovation. Its commitment to the community is reflected in its JOIN US FOR GOOD campaign. We assist Eastern Bank with its trademark prosecution and enforcement efforts.

Haemonetics Corporation

Haemonetics is the world leader in blood management products and services. Haemonetics’ comprehensive portfolio of devices, software and services offers blood and blood plasma management solutions for each facet of the blood supply chain. We assist Haemonetics with its worldwide trademark prosecution, brand protection strategy and enforcement needs.

Trademark Practice Articles

  1. Study Demonstrates Positive Economic Impact of Trademark Filing
  2. Litigate Your Trademark Rights With Care, No Matter what Forum You’re In
  3. The First Circuit Allows a Chapter 11 Debtor to Terminate A Trademark License
  4. Restricting Keyword Advertising Can be Anticompetitive, holds the FTC
  5. Don’t Just Give it Away: Unless a Product is Sold, European Law Recognizes No Genuine Trademark Use
  6. Crazy In Love With Trademarks: What Can Jay-Z and Beyoncé Teach Us About Trademark Filing?
  7. Big Changes to Canada’s Trademark Laws
  8. Generic.com: Should “Generic” Domain Names Be Registerable as Trademarks?
  9. Issues Resolved in an Administrative Trademark Proceeding May Bind Federal Courts in Subsequent Infringement Actions
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Trademark Practice

The "Strength" of a Mark

The strongest marks are those that are considered fanciful. A fanciful mark is one that has been made up or invented by its owner. Fanciful marks are either previously unknown words, or archaic or obsolete terms that are no longer commonly known. Non-word marks (letters, numbers, designs and pictures) may also be considered fanciful. Examples of fanciful marks are EXXON®, KODAK®, and XEROX®.

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