Trademarks & Unfair Competition

Trademarks

As our clients make crucial decisions about their brand identities, we work closely with them to ensure legal problems don’t get in the way of their plans.

We represent clients in all phases of trademark application, preparation and prosecution.
Representation can also extend to post-registration filings, including declarations of use and renewals.
This process often begins with our lawyers and paralegals conducting trademark and trade name availability searches.
By comparing a mark with earlier ones of others, our lawyers can determine whether “a likelihood of confusion” and other legal risks exist. This analysis is an essential step in foreseeing and mitigating future disputes and possible trademark infringement litigation.
Similarly, our personnel provide a careful monitoring of the trademarks of clients to identify parties who might be using confusingly similar marks.
For those who require having another person or business use their mark in commerce, our lawyers can prepare trademark licensing agreements Lucas & Mercanti, LLP also offers experienced representation in domain name registration and dispute resolution.

When it becomes apparent that a client’s trademark is at risk or that a client is in jeopardy of being accused of infringement, we respond decisively. For example, we have represented owners and accused infringers in civil actions in the federal and state courts in infringement and declaratory judgment actions involving trademarks and trade dress claims, and in successful oppositions of preliminary injunction motions in trademark and trade dress actions, prevailing against allegations of actual consumer confusion. We have appeared in opposition and cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”) of the USPTO; and we have represented clients before the International Trade Commission involving claims of trade dress infringement.

Unfair Competition

One of the most common aspects of unfair competition results from the usurpation of trade secret information. Many courts reject the claim that information is a trade secret because the procedures and protocols in place for safeguarding that information do not adhere to the requirements under law.

“A trade secret may consist of any formula, pattern, device or compilation of information which is used in one's business, and which gives him an opportunity to obtain an advantage over competitors who do not know or use it… The subject matter of a trade secret must be secret… Substantially, a trade secret is known only in the particular business in which it is used.” - Restatement of Torts"

Lucas & Mercanti often assists clients in the effective creation and implementation of trade secret programs. Such counsel can have a profound impact on a company’s business practices. Generally, a claim may result against another for trade secret misappropriation for wrongfully obtaining and disseminating that information. Intellectual property protection also extends to employment and consultant agreements. For example, since patents issue to inventors in the United States, companies need to specify in the employment agreement or the consultant agreement that ownership of any patents that are job-related rests or will rest with the employer.

Our firm is also experienced in helping to protect a company’s propriety information through the crafting of a non-disclosure agreement which is also referred to as a secrecy agreement or confidentiality agreement. Our lawyers will also update these agreements to reflect changing circumstance within the company