Mind + Muscle

technical minds + legal muscle



Trademark, Advertising, and Anti-Counterfeiting

Sterne Kessler's Trademark, Advertising, and Anti-Counterfeiting practice relies on more than 30 years of experience meeting the intellectual property needs of companies developing and maintaining strong brands around the world.  Comprehensive and strategic intellectual property protection and enforcement helps businesses both differentiate their product and service offerings from those of competitors, and help them achieve full market potential.  Our well-thought-out IP strategies guard against patent, trademark, and copyright infringers, knock-offs and counterfeiting, online fraud, and idea theft by competitors, insiders, partners, and manufacturers – all of which can harm your reputation and brand.  


Trademarks are the most enduring of all forms of intellectual property, capable of distinguishing your identity and reputation from the competition for the life of your business, products, and services.

When it comes to counseling on trademark selection, protection, enhancement, and enforcement, "client focus" is not just a buzzword.  It is a defining part of our trademark practice.  Our approach employs a team of legal professionals, including directors recognized by the trademark industry as leaders in the field, combined with a mix of associates, trademark specialists, and paralegals with competitive billing rates.  We approach each project by determining the most efficient and cost effective strategy to produce high quality, high value results for you.

We have a diverse client base, providing counsel to companies operating in virtually every market segment.  We work with both in-house counsel and business teams to assess the needs of the organization and recommend the best course of action to effectively and efficiently meet your goals.  We also work with you to ensure your trademark strategy evolves with your business.

Trademark services include:

  • Federal, State, and Foreign Trademark Registration
  • Managing Global Trademark Portfolios
  • Trademark Licensing 
  • Trademark Enforcement and Defense
  • Trademark Clearinghouse Registration and Domain Name Dispute Resolution
  • Alternative Dispute Resolution (mediation and arbitration) 
  • Oppositions and Cancellations 
  • Trade Dress Protection of Non-traditional Marks (shape, sound, color, scent) 
  • Review of Product Literature/Labeling and Websites for proper Trademark Usage 
  • Negotiate IP Transactions
  • Trademark Valuation 
  • Branding Guidelines and Programs


Growing a brand requires a significant investment of both financial and emotional capital.  As market segments and channels of trade have become ever more blurred, businesses have to work double time to capture consumers' attention.  One the one hand, creative media and advertising strategies can help your brand gain traction in a crowded marketplace.  But, every new creative strategy comes with a new set of legal challenges.  We help clients understand the legal implications of any advertising campaign – new or old. 

Our advertising focused IP services concentrate on helping you avoid false advertising claims,  ensure you comply with claims requirements, and assist in utilization of new media platforms for promoting products and  connecting with customers in the online marketplace. We also help clients explore opportunities for brand expansion including licensing, co-branding, and affinity relationships, and enhance brand exposure via sponsorship and endorsement agreements.

Advertising services include:

  • Advertising Review
  • Brand Messaging
  • Claims Analysis
  • Branding Guideline Compliance
  • Cooperative Advertising
  • Sponsorship and Endorsement Agreements


The explosive growth in counterfeiting, fueled in part by the expansion of the Internet, is costing the global economy billions of dollars.  It negatively impacts profits, consumer safety, and business reputations in virtually every industry worldwide. 

Even though the threat from counterfeiters is obvious, companies are often stumped at how to implement an effective program to counteract counterfeiting, relying on piecemeal (and often inefficient) enforcement methods. Our practice is focused on addressing this issue.

At Sterne Kessler, we recognize that lessening the impact of counterfeiting on a business is not just a litigation or enforcement issue, but it is a business issue – one that must be addressed strategically in order to have the greatest effect.  Sterne Kessler's team works with our clients' marketing, strategic, and legal departments to develop thoughtful, targeted approaches to lessen the impact of counterfeiting throughout the entire organization.   

Anti-Counterfeiting services include:

  • Registration and recordation of trademarks with trademark offices and Customs agencies around the word, and assist those agencies in detecting counterfeit products.
  • Develop programs to guard and monitor distribution channels
  • Methods to secure and track products and packaging
  • Work with government agencies that can act against counterfeiters
  • Work with law enforcement, customs authorities, prosecutors, investigators, and local regulatory authorities
  • Coordinate investigations of counterfeiting operations and collect evidence for use in enforcement, and take counterfeiters to trial.

Why Sterne Kessler?

  • We work closely with clients to identify and create strong brand identity strategies
  • Results-oriented approach that considers trademark protection, leverage, and enforcement in alignment with business goals
  • We regularly audit materials and media to ensure maximum exposure and proper use of trademarks and other IP
  • We negotiate trademark license and coexistence agreements, and sponsorship and endorsement agreements for strategic advantage
  • We're registered as a Trademark Agent for the Trademark Clearinghouse, and assist clients with planning and implementing strategies relating to the launch of the new gTLDs;
  • Successful representation of both complainants and respondents in UDRP proceedings

Unsolicited e-mails and information sent to Sterne, Kessler, Goldstein & Fox P.L.L.C. will not be considered confidential or privileged, may be disclosed to others, may not receive a response, and do not create an attorney-client relationship with Sterne Kessler.  If you are not already a client of Sterne Kessler, do not include any confidential information in this message.