International Intellectual Property - USA

International Intellectual Property - USA

Published May 2023


Robert B.G. Horowitz

Firm: BakerHostetler
Country: USA

Practice Area: Intellectual Property

  • 45 Rockefeller Plaza
    New York

Guide Content

BakerHostetler is a general US law firm with 17 offices nationwide.  It has six practice groups, with IP being one.  The firm’s IP group has more than 130 attorneys and provides legal services in patents, trademarks, copyrights, and trade secrets.  Its attorneys deal with cutting-edge legal issues.  The firm distinguishes itself by the prompt attention it gives to its clients’ matters and the reasonableness of its charges for doing so.

My practice is predominantly, but not exclusively, trademark-oriented. In the trademark area,  I deal with the searching and clearance of marks, prosecution of US applications, handling trademark oppositions and cancellation proceedings in the USPTO as well as infringement cases, and trademark licensing.  I also work with numerous foreign counsels worldwide for the acquisition and protection clients’ trademarks outside of the US.  Y copyright work involves procurement and enforcement of copyrights.  Additionally, I provide advice about trade secrets protection as well as basic IP advice for start-ups.  

Recent issues of importance of clients is the use and registration of their marks in the metaverse and for non-fungible tokens (NFTs), as well as the use by others of their marks in the metaverse and in connection with NFTs.  Additionally, generic uses of a client’s mark in Europe has resulted in an ongoing, and successful, campaign to stop them to prevenet a significant brand from becoming generic there.

The misuse of marks both domestic and abroad is causing significant demand for investigation and infringement claims, likely due to the proliferation of the metaverse and NFTs, as well as foreign users of trademarks in a generic way.  

The challenges presented in safeguarding IP involve effective monitoring of market use and undertaking sufficient policing to stop such infringing uses and deter others from infringing.  Registration of marks and US copyright registrations are the strongest weapons available to a business for safeguarding its IP, as well as recording such registrations with US Customs to prevent counterfeits from entering the US. 

Domain name disputes typically are handled through UDRP proceedings.  The third element of a UDRP claim --establishing bad faith registration by the domain name registrant-- usually is what prevents a UDRP case from being won.  A new arena is the infringing use of marks on virtual goods, which has resulted in a new wave of trademark infringement cases that are in their infancy early stages.

Principally, registering marks in countries of interest to a trademark owner and recording registered marks with customs agencies.  For example, in China, registering marks in specific subclasses within a class of goods is critical for complete protection, and having a good associate there to facilitate recording a registration with China Customs is essential. Watch services are also necessary for enforcement, both domestic and foreign.

Due diligence such as IP searches is essential at the beginning of a case for one to counsel a client about the strengths and possible weaknesses of its adoption of a mark or another type of IP case.  The worst thing to happen to  a trademark owner is the adoption of a mark without complete searching beforehand, only to face a possible injunction a few years later by a prior rights holder after significant investment in a mark is made. 

Due diligence is also essential for assessing the strengths and weaknesses of a client’s case where the assertion of IP rights is contemplated, for a client to make an informed decision about risks presented in asserting rights against an infringer.

I have been a member of the European trademark association named MARQUES, for  years, having led a sub team for the Famous and Well Known Marks team where I have helped create at least six surveys of legal issues and have provided the US positions in response to them. I also was a lecturer before 600 people at MARQUES’ 2018 Annual Meeting in Paris, France about how non-traditional trademarks are treated by the USPTO, and was a moderator of and speaker for a 2012 panel at MARQUES’ annual conference in Athens titled “Treasure or Nuisance? The Real-Life Challenges of Well Known Brands” with speakers from Europe, Russia, China, Latin America and I examining issues concerning how to achieve and enforce the enhanced protection of well-known brands, and I also discussed the intricacies of the U.S. trademark anti-dilution statute. The information given and received at MARQUES has been very helpful for my clients based outside of the US.  

Additionally, I have authored articles about the licensing of characters as trademarks, as well as the necessity of policing trademarks in the US to avoid the anomaly presented in the Thermos case, which appeared in the World Trademark Review and  an article about non-traditional trademarks in ABPI, the Journal of the Brazilian Intellectual roperty Association, which were well received, among others I have written.

I also lectured in Japan about the US Defend Trade Secrets Act in Japan and in South Korea about issues of concern to Korean IP owners who wish to enforce their rights in the US International Trade Commission. 

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