Trademark/Copyright Prosecution & Portfolio Management


Trademark prosecution and portfolio management requires experience, expertise and attention to detail. The IP attorneys in Ulmer & Berne’s trademark prosecution practice bring decades of experience to search, clearance, and portfolio management. By understanding our clients’ businesses and competitive landscapes, we are able to thoroughly and efficiently search and clear new marks. We successfully prosecute trademark applications in the USPTO and effectively manage global trademark portfolios through our network of foreign associates.

There is no one-size-fits-all approach to trademark portfolio management. We collaborate with our clients to develop best practices to suit their portfolios. Our trademark attorneys have experience as in-house trademark counsel, and as outside counsel managing global trademark portfolios for Fortune 500 companies as well as local companies and start-ups.

By Thomas M. Williams and Hillary E. Maynard In late February, a group of Kona, Hawaii coffee farmers filed a lawsuit in federal court in Seattle against coffee distributors, wholesalers, and retailers selling allegedly counterfeit Kona coffee products. The 19 defendants in this action include mega retailers Amazon, Walmart, and...

Earlier this month, a federal jury in North Carolina hit Walmart with a $95.5 million verdict for its willful infringement of Variety Stores, Inc.’s “BACKYARD” trademarks. The jury awarded $45.5 million as a reasonable royalty and disgorged $50 million in Walmart’s profits to create the total award. The case presents...

Ulmer & Berne LLP is pleased to announce that 11 of the firm’s attorneys have been recognized by Cincy Magazine as Cincy Leading Lawyers. Attorneys selected as Cincy Leading Lawyers are considered to be the best in the Tristate area. Members of Greater Cincinnati’s legal community nominate their colleagues each...

Ulmer & Berne LLP is pleased to announce that five attorneys from its Chicago office have been selected to the 2019 list of Illinois Super Lawyers. The list features the top attorneys in the state, chosen for their demonstrated excellence in the practice of law. Of those named from Ulmer,...

Ulmer & Berne LLP continues to grow its nationally recognized Intellectual Property Practice Group with the addition of Associate Justin P. Clark. Clark is an intellectual property and information technology attorney who focuses his practice on technology transactions, intellectual property licensing, and data security and privacy. “We are excited to begin...

Ulmer Partner Thomas M. Williams was recently quoted in Managing Intellectual Property, World Intellectual Property Review, and Law360 about pressing trademark cases. In Managing Intellectual Property’s “Hey! Wait! Nirvana’s Got A New Copyright Complaint” and World Intellectual Property Review’s, “Lawyers cast doubt on Nirvana claims against Marc Jacobs,” Williams comments...

Ulmer Partner Thomas M. Williams was recently published in both IP Watchdog and Westlaw Journal Intellectual Property on the Converse shoe design fight. In IP Watchdog, Williams wrote an article discussing the recent Federal Circuit Court of Appeals decision in the Converse case and how the decision highlights multiple obstacles...

Ulmer & Berne LLP is pleased to announce the addition of three associates to the firm. Kathryn (Katie) Bartolomucci and Brooke Tyus join Ulmer’s Cleveland office, while Hillary Maynard joins the firm’s Chicago office. “We’re thrilled to bring Katie, Brooke, and Hillary on as associates,” said Scott P. Kadish, Managing...

The World Trademark Review (WTR) has recognized Ulmer & Berne LLP partners Thomas M. Williams and Michael A. Marrero in its “WTR 1000 – The World’s Leading Trademark Professionals” rankings. WTR is the world’s only independent multimedia publication dedicated exclusively to reporting on trademark issues. This marks the seventh consecutive...

Ulmer & Berne LLP is pleased to announce the promotion of Seth A. Voit to partner. Voit, a member of Ulmer’s Intellectual Property & Technology Group, is based in the firm’s Cincinnati office. “We are both excited and fortunate to welcome Seth into our partnership,” said Ulmer Managing Partner Scott...

Today, the United States Supreme Court overturned a provision of the Lanham Act that disallowed registration of terms or phrases that “may disparage” persons in Matal v. Tam. The Supreme Court ruled that the so-called “disparagement clause” of the Lanham Act violated the free speech provisions of the First Amendment....

The World Trademark Review (WTR) has recognized Ulmer & Berne partners Thomas M. Williams and Michael A. Marrero in its “WTR 1000 – The World’s Leading Trademark Professionals” rankings. WTR is the world’s only independent multimedia publication dedicated exclusively to reporting on trademark issues. This marks the fifth consecutive year...

“US District Court Upholds Cancellation of ‘Redskins’ Registrations” World Intellectual Property Review July 9, 2015

Ulmer & Berne LLP partner Thomas M. Williams is recognized for the fourth consecutive year by the World Trademark Review (WTR) in their “WTR 1000 – The World’s Leading Trademark Professionals” rankings. WTR is the world’s only independent multimedia publication dedicated exclusively to reporting on trademark issues. An accomplished litigator,...

“Trademark Issues Get Attention From Supreme Court Preclusion, Deference, Re-Litigation and Other Topics Get a Lot of the Attention From the Supreme Court Justices” InsideCounsel December 4, 2014

Ulmer & Berne LLP is named to the BTI IP Honor Roll as described in the “BTI Intellectual Property Outlook 2015: Changes, Trends and Opportunities in IP & IP Litigation.” BTI Consulting is a leading provider of market research for professional service firms. The BTI IP Outlook 2015 combines a...

“Lanham Act Suit Proceeds Against Coke; Consumer Attorneys Call Ruling a Boon” Bloomberg BNA Product Safety & Liability Reporter June 12, 2014

“Lanham Act Suit Proceeds Against Coke; Consumer Attorneys Call Ruling a Boon” Bloomberg BNA Product Safety & Liability Reporter June 12, 2014

“Sixth Circuit Upholds Infringement Finding Against Bar’s Owner for Copyright Violations” Bloomberg BNA Patent, Trademark & Copyright Law Daily June 11, 2014

Ulmer & Berne LLP partner Thomas M. Williams is recognized for the third year in a row by the World Trademark Review (WTR) in their “WTR 1000 – The World’s Leading Trademark Professionals” rankings. WTR is the world’s only independent multimedia publication dedicated exclusively to reporting on trademark issues. An...

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