Marshall, Gerstein & Borun LLP

Trademarks

Worldwide Trademark Protection

Whether your business interests are focused on the domestic U.S. market or extend across the globe, Marshall, Gerstein & Borun provides seasoned advice on the risks and advantages of your branding objectives and assists you in clearing, registering and protecting your trademarks. Our lawyers conduct and review computer, internet and full availability searches to help clear your trademarks. We counsel clients on proper use and promotion, and register or oversee registration of your trademarks in the U.S. Patent & Trademark Office and trademark offices worldwide. We use sophisticated online systems to conduct searches, to file trademark applications, to research and conduct opposition and cancellation proceedings, to monitor and maintain our clients' registered marks, and to monitor trademark databases worldwide for similar trademarks. Such dedication, coupled with our attorneys' more than 100 years of collective trademark experience assures you of expert and comprehensive brand protection anywhere in the world.

Our Firm works closely with our foreign colleagues to register and enforce trademark rights internationally. We also identify and use filing and registration systems and procedures, including OHIM's Community Trade Mark system and the Madrid Protocol to cost-effectively register and protect our clients’ trademarks.

Case Studies

Marshall, Gerstein & Borun has represented The Nielsen Company since the early 1990s, maintaining an extensive and effective worldwide trademark clearance, registration, and protection program enabling the company to build its brand portfolio, protect its primary NIELSEN^® trademarks, and meet its business and marketing expectations. The Nielsen Company has accomplished these goals without a large in-house trademark department through its partnership with the Firm as outside counsel. Acknowledging the importance of the partnership, The Nielsen Company’s Chief Legal Officer, James P. Cuminale, thanked Marshall, Gerstein & Borun for “being such a great partner to [The Nielsen Company].”
We are committed to adding value to the trademark management process, and simplifying processes is only the start of what we do. For example, through Marshall, Gerstein & Borun’s “embedded lawyer” program, a Firm lawyer works on-site at the offices of a client to handle trademark asset integration, management and clearance. For a leading multinational risk management and reinsurance corporation, our embedded lawyer integrated the trademark portfolio of a $2 billion acquisition.
In adversarial matters, Marshall, Gerstein & Borun has a reputation for crafting business-savvy solutions and, where compromise is not possible, conducted focused litigation to obtain quick, favorable, and cost effective results. Our work in infringement proceedings before the courts in opposition, cancellation, and concurrent use proceedings before the TTAB and in Uniform Dispute Resolution Policy proceedings against cybersquatters; has produced major victories for leading retailers and Internet companies – as well as such unique outcomes as successfully opposing a leading motorcycle manufacturer’s attempt to register the sound of its motorcycles as a trademark.

Representative Client List