Trademark Litigation & Counseling | Services

Overview

Boasting one of the best-known names for trademarks in the United States, Kirkland & Ellis promises a top-notch service in every part of the country. From strategic advice and deft portfolio management to bet-the-brand litigations, the practice is a routine port of call for the world’s biggest and best-known players. - WTR 1000, 2023

Our trademark attorneys have decades of experience handling some of the highest profile trademark matters with extraordinary results. Our experience spans a wide range of industries, including computer software and other technology, consumer products, entertainment and media, fashion, financial services, and pharmaceuticals. Our lawyers are frequently called on to provide strategic advice on how best to protect, maintain and enhance valuable intellectual property assets — including building brands and businesses — on a worldwide basis.

Our lawyers represent corporations and individuals in all phases of litigation, from obtaining and defeating initial TROs and preliminary injunctions through final appeals to the U.S. Supreme Court. We understand litigation and formulate legal strategy with the client’s business interests in mind. When it comes to trial, our trademark lawyers actually try cases and win them. In addition to federal and state court litigation, we also have experience conducting trademark prosecutions as well as complicated inter partes matters before the Trademark Trial and Appeal Board (TTAB) and trademark-related investigation proceedings before the International Trade Commission (ITC).

We offer “soup to nuts” IP services for our clients, including all aspects of trademark clearance, prosecution and enforcement. Thus, we manage entire trademark portfolios as well as clearance and prosecution projects, office action responses, inter partes proceedings, and trademark enforcement programs for numerous diverse companies.

Kirkland provides a one-stop shop for all trademark, copyright and false advertising needs and we manage these practices as an integrated whole. For more information, please see our Copyright, Trademark, Internet & Advertising (CTIA) brochure.

Experience

Our practice is unique in its breadth and scope. With decades of experience, our lawyers have handled matters for marquee clients in the media and entertainment, software and technology, consumer products, fashion, hospitality, and financial services industries. These representations have led to tremendous results in both trial and appellate courts. Our lawyers are involved in cutting-edge cases and are called upon to provide advice on issues that have never been tested in the courts. Our attorneys have worked closely on regulatory and legislative policy developments, including serving on the International Trademark Association (INTA) Presidential Select Committee that helped draft the revised federal anti-dilution act and led the way on its application in the courts.

We represent myriad companies in a wide variety of industries in TTAB proceedings. In our experience, it is important that such proceedings, like all other aspects of intellectual property strategy, be consistent with and fit within the client’s overall enforcement strategy. Thus, many of the proceedings we have handled have been in parallel to similar foreign proceedings. In such cases, we coordinate with local counsel to ensure that our strategies are consistent. Among other things, we work closely with local counsel to obtain factual evidence (e.g., third-party uses) and expert evidence (e.g., report from a linguist regarding descriptiveness) that can be used in multiple proceedings. In all areas, we pride ourselves on our innovative strategies, which are designed to help our clients reach their ultimate business goals.

We approach prosecution and day-to-day enforcement always with an eye to potential litigation, both offensive and defensive. Because we are so experienced in litigation, we are able to spot issues and avoid arguments that might be superficially convenient in prosecution, but could spur litigation or come back to haunt a client in future enforcement matters. Our litigation experience also helps us quickly analyze the strengths and weaknesses of a case and provide concrete advice about whether to pursue a particular matter. This skill is useful for everyday enforcement and for helping clients develop brand strength by targeting easy wins that can set the stage for future, more complex enforcement matters.

Tier 1 for Trademark Litigation

The Legal 500 United States, 2023

Tier 1 for Trademark Enforcement & Litigation

WTR 1000, 2023

Tier 1 for Trademark Contentious

IP Stars, 2020–2023