Trademark & Copyright
Group at a Glance
- 10 members
- Filed 848 trademark applications in 2012
- Annually listed by NameProtect, Inc. (trademark research company) among top trademark registration firms in United States
What Matters to Our Clients
Experienced Branding Advisors
The value of a good reputation in the market starts with the selection of a strong brand. We know from experience how to guide clients toward strong brands, and we understand the business value of doing it well.
The business objectives of our clients play a large role in our advice as we seek marks that will secure exclusivity in their key markets, avoid potential infringement issues, and maximize commercial impact. For this reason, we have built internal systems and created strong offerings to be highly effective in our support of clients through such critical decisions.
Because a company’s name, trademarks, and trade dress are critical in delivering the brand promise, protection of those assets calls for rigorous analysis, strategy, and execution. Our clients value the longstanding experience we bring to their challenges. Decades of experience in counseling our clients on the strategic selection, cost-effective registration, on-going management, and enforcement of trademark, trade dress, and domain name rights has conferred wisdom to our practice.
In 2012 alone, we filed 848 trademark applications, which is quantifiably the largest number filed by any New England firm devoted exclusively to IP law.
International Presence
Because the international market is an important part of decisions, counseling clients requires the knowledge and resources to traverse the labyrinth of independent legal systems, treaties, and agreements. Our clients rely on us to help them develop cost-effective global strategies for determining where and when to protect their trademark and copyright assets. Executing aggressively on those strategies in our clients’ key markets and manufacturing countries, we use a well-established network of international associates to efficiently extend our reach world-wide.
This reach is particularly useful in anti-counterfeiting matters, as well as in coordinating world-wide clearance and registrations to protect trademarks and copyrights in a broad range of industry sectors.
Technical Expertise
Our clients count on us to apply our sophisticated technical backgrounds to the art of branding their products and services. Understanding the technology behind a client’s product or service brands allows us to develop and execute strategies that return strong business value.
Enforcement Experience
When it becomes necessary to enforce our client’s trademarks, trade dress, or copyrights, we create strategies on when and where to litigate, whether to seek arbitration or other ADR solution, and how to craft a winning trial strategy.
We have successfully handled numerous domain name disputes, and trademark, trade dress, and copyright infringement cases, including a case which has become the leading authority in the U.S. Court of Appeals for the First Circuit on trade secrets, a decision cited as a leading case on trade dress and copyright law, and the largest jury verdict in a trade secret case in Massachusetts history.
Scope of Practice
Services we provide clients in this area include:
- Strategic counseling on trademark and copyright clearance, selection and use
- Acquisition, assignment, and sale of trademark and copyright rights
- Drafting and prosecution of trademark and copyright registrations in U.S. and other countries
- Advice on internet domain name selection, registration, and use
- Software copyright licensing and enforcement issues
- Trademark and copyright portfolio audits
- Trademark and copyright litigation including oppositions and cancellations before the Trademark Trial and Appeals Board
- Trademark and copyright issues on the internet (keywords, Second Life, etc.)
- Advice on international anti-counterfeiting, anti-infringement, and anti-parallel trade and brand strategies
- Licensing and development agreements
- Collateral security agreements involving trademarks and copyrights
- Internet and domain name registrations, counseling, and dispute resolution
- Infringement and due diligence opinions
- Right to use and register opinions
- Client training and trademark and copyright audits
- Maintenance of trademark rights
Representative Industries Served
- Apparel & fashion accessories
- Athletic equipment
- Chemical technologies
- Computer hardware
- Computer software
- Consumer electronics
- Electronic components
- Financial services
- Fluid treatment and purification equipment
- Food, beverages & restaurants
- Footwear
- Hospitals
- Infant & children’s products
- Internet technologies
- Kitchen and houseware products
- Medical devices
- Office supplies
- Personal care products
- Pharmaceuticals
- Publishing
- Semiconductors
- Toys
- Burton Snowboards
- Earth.com, Inc.
- Iron Mountain Incorporated
- Keurig, Incorporated
- Staples, Inc.
- Teradyne, Inc.
- THQ Inc.
- Tootsie Roll Industries, Inc.
- Toy State Industrial, Ltd.
April 10, 2013 - Rob Walat quoted in Mass High Tech
March 22, 2013 - Ed Walsh quoted on "first-inventor-to-file" changes
March 22, 2013 - Patrick Waller quoted on the "First-Inventor-to File" system
March 11, 2013 - Patrick Waller quoted in Law360 on first-to-file patent system
February 21, 2013 - Wolf Greenfield Attorney Recognized for Pro Bono Service by Women’s Bar Foundation
February 12, 2013 - Deadline approaches for patent protections
February 2013 - Why AdWords are not set in stone
February 5, 2013 - Wolf Greenfield Named Elite Trademark Law Firm in World Trademark Report 1000
January 29, 2013 - Preparing for the “First Inventor to File” Transition
February 2012 - The Birthing of Celebrity Brands: Lin-Tastic!
January 18, 2013 - Ed Walsh was quoted in a Law360 article on Patent Reform
October 30, 2012 - Anderson Duff quoted on the Kirtsaeng case
October 22, 2012 - Fifteen Wolf Greenfield Lawyers Highlighted in 2012 Massachusetts Super Lawyers List
October 18, 2012 - WOLF GREENFIELD SEMINAR: What You Need to Know to Prepare for the "First Inventor to File" Transition - Replay Now Available
October 15, 2012 - Anderson Duff quoted in the Boston Globe
September 25, 2012 - Hot Red Feet
September 19, 2012 - Eleven Wolf Greenfield Attorneys Selected for 2013 Best Lawyers in America®
September 6, 2012 - Federal Circuit Establishes New Standard on Divided Infringement and Inducement
August 6, 2012 - Protecting your trademarks is an Olympic feat
July 27, 2012 - Chelsea Loughran quoted in Law360 on the new First-To-File rules
July 18, 2012 - Anderson Duff was quoted in LAW360
June 2012 - Wolf Greenfield Named to IAM 1000 World’s Leading Patent Practitioners List
June 2012 - GBLS Recognizes Wolf Greenfield with 2012 Associates Drive Award
May 24, 2012 - Anderson Duff quoted in PC World
May 16, 2012 - Doug Wolf presented at Boston Biz Labs
April 26, 2012 - Wolf Greenfield Named Top Trademark Law Firm by World Trademark Report’s WTR 1000
In re Becton, Dickinson and Co (4/12/12) - Courts Still Wrestling with Trademark Functionality
Bridgestone, LLC v. Federal Corp. (dec. 3/16/12) - Federal Circuit Takes Another Look at Likelihood of Confusion
Coach Services v Triumph Learning (2/21/12) - What “Fame” Means in the Likelihood of Confusion and Dilution Contexts
February 16, 2012 - WOLF GREENFIELD SEMINAR: Trademark Protection in a Social, Global Economy - replay now available
February 10, 2012 - What You Need to Know About Creative Commons
January 31, 2012 - Is SOPA Really That Bad?
January 30, 2012 - Louboutin Has the Fashion Industry Seeing Red
January 23, 2012 - The Confusing Intersection of Trademarks and Search Engine Optimization
January 2012 - Wolf Greenfield Joins Leading Organizations Exploring Trademark Issues in a Digital Culture
January 4, 2012 - The 2011 Trademark Report
December 2011 - Neil Ferraro Named 2012 Boston Patent Law Association President
January 4, 2012 - Trademark Report: Highlights from 2011 and Looking Forward to 2012
January 3, 2012 - Wolf Greenfield Welcomes 2012 Promoting Seven Lawyers to New Positions
December 2011 - Copyrights Used to Stop Grey Market Goods—The Good and the Bad
October 2011 - The Final Chapter
November 2011 - America Invents Act: The Implications of Patent Reform
October 25, 2011 - Wolf Greenfield mentioned in the Country Index for Dependent Territories
October 12, 2011 - Wolf Greenfield Sponsored MIT Forum Event on October 12
August 18, 2011 - September 1 deadline to obtain registration to prevent .XXX domain name registrations of your trademark
June 24, 2011 - Wolf Greenfield Named One of World’s Top Trademark Law Firms by World Trademark Review
May 6, 2011 - Christina Licursi, Ed Perlman, and Doug Wolf attended 2011 INTA Annual Meeting
April 2011 - Google Books and the Complexity Of Digitalization
April 2011 - Doug Wolf in top tier of World Trademark Review
February 25, 2011 - Managing the Pace of Patent Applications
February 17, 2011 - WOLF GREENFIELD SEMINAR: Managing IP Risks: The Importance of Obtaining Freedom to Operate Guidance - presentation now available
January 2011 - Facebook: Trademarks, Fan Pages, and Community Pages
January 1, 2011 - Wolf Greenfield filed 2,749 patent applications and 688 trademark applications in 2010.
December 2010 - Wolf Greenfield was ranked #1 in number of patents filed and number of patent attorneys in Mass High Tech’s annual survey
December 2, 2010 - Doug Wolf interviewed on the MTOB radio show
August 22, 2010 - Hunter Baker, Ed Gates and Chelsea Loughran presented at the American Chemical Society’s Fall National Meeting
June 2010 - Increasing Use Of Non-Traditional Marks
June 28, 2010 - CLIENT ALERT— Supreme Court Leaves Door Open to Business Method Patents
June 17, 2010 - WOLF GREENFIELD SEMINAR: Strategically Building and Monetizing a Patent Portfolio - replay now available
June 9, 2010 - Virtual-World Conflicts Lead To Real-World Suits
June 1, 2010 - Google pulls an Apple and removes Tetris-type games from Android Market
December 11, 2009 - All companies have IP — and the need to protect it
October 21, 2009 - Doug Wolf presented at Boston Bar Association lunch
September 2009 - Google patents (2004) home page
June 2, 2009 - Wolf Greenfield named Boston’s most prolific trademark law firm by NameProtect
December 1, 2008 - CLIENT ALERT — ICANN Proposes Domain Name Expansion
June 9, 2008 - Give Your Company a Distinct Name
June 6, 2008 - Protect IP in Online Worlds to Avoid Virtual Nightmares
June 6, 2008 - It's a Small World After All in Terms of Rising IP Risks
May 30, 2008 - Federal Court Dents RIAA Strategy Against File-Sharers
April 30, 2008 - Industry Insights: PTO's Potential Next Moves
April 17, 2008 - Proposed Changes to Copyright Office Fees
April 14, 2008 - Tafas Decision Sparks Hope IDS Rules Also Doomed
April 10, 2008 - UMass Amherst Entrepreneurship Initiative
April 4, 2008 - Corporations Escape Patent Threat
February 7, 2008 - An Entrepreneur's Guide to the Intellectual Property Galaxy
February 2008 - Second Life Brings Infringement Risks and Licensing Opportunities, Top Trademark Expert Says - Wolf Greenfield’s Doug Wolf Offers Guidelines
January 17, 2008 - Intellectual Property Considerations in Entrepreneurship
January 6, 2008 - Technology Innovation Challenge
January 2008 - Licensing and Infringement in a Virtual World
November 16, 2007 - USPTO Issues New Guidelines for Determining "Obviousness" After Supreme Court's KSR Decision
November 16, 2007 - CLIENT ALERT — USPTO Issues New Guidelines for Determining "Obviousness" After Supreme Court’s KSR Decision
November, 2007 - Protecting Trademarks in China is No Easy Trick
November 2007 - Protecting Trademarks in China Is Crucial But Challenging, Wolf Greenfield Experts Write
October 25, 2007 - PRESS RELEASE — Protecting Your Brand Name in the Growing World Economy for SGMA
October 3, 2007 - Trademark Year in Review 2007
October 1, 2007 - To Protect Your Trademarks in China, Stay Extra Alert
September, 2007 - Trademarks Need to Create a 'Lasting' Impression
July, 2007 - New Trademark Act Revises Standards of ‘Dilution’
June 20, 2007 - Intellectual Property in China: Balancing Risks With Rewards
February 21, 2007 - Intellectual Property: A New Source of Wealth and Power
January 24, 2007 - Acquiring Minds Want to Know: IP Due Diligence for Investors and Entrepreneurs
September 19, 2006 - Trademark Searching
September 4, 2006 - Trademark question: To Google or not to Google?
August 1, 2006 - CLIENT ALERT — New Rules on Accelerated Examinations
December, 2005 - Current Developments in U.S. Anti-Counterfeiting Law
November 4, 2005 - CLIENT ALERT — .EU Domain Names Now Available
September 2005 - Wrap it up - Why you should license your technology and brand
April 14, 2005 - The "Use it or Lose it" Rule in Trademark Law
Q&A Booklet - Q&A on Trademarks & Copyrights
Q&A Booklet - Q&A on Intellectual Property Litigation
Q&A Booklet - Q&A on Licensing and Transactions
April 14, 2003 - The Use of Trademarks for Resale of Refurbished Goods
2003 - Is Your Corporate Identity at Risk? - How to Proactively Protect Your Trademarks, Domains, and Good Name
