Copyright & Trademark

A company's name, trademark, service mark, trade dress, and website domain name are among its most valuable assets, so selecting the right name or mark, and defending it, can be among the most important decisions a business can make. Smith Duggan helps clients in the strategic selection, registration, management, and enforcement of trademark, trade dress and domain name rights. We help clients research the availability of marks, and work with our clients to help them choose marks, names and mark designs. We take into consideration not only potential infringement of third-party rights, but also whether a potential name or trademark can be registered and can provide the client with the desired exclusivity.

We have extensive experience in filing and successfully registering trademarks and service marks with the United States Patent and Trademark Office (USPTO). We have also helped clients prevent third-party misappropriation of trademarks and names by opposing registrations and seeking cancellations of existing registrations in the USPTO.

Smith Duggan provides its clients with guidance as to the ownership and protection of copyrights arising from a wide range of works produced by employees, contractors and consultants. We are also experienced in filing copyright registrations before the US Copyright Office and defending clients against copyright infringement actions.

Smith Duggan represents clients on Internet-related copyright matters, and in unauthorized use and “piracy” disputes. For example we are experienced helping clients to protect against the unauthorized use of their proprietary content, such as unauthorized on-line distribution or “posting” of video and music, removed or “taken down”, and in defending against “fair use” or public domain claims.

Smith Duggan Buell & Rufo represents plaintiffs and defendants in patent, copyright, and trademark litigation; trade secret, contract, and unfair trade practices litigation; and authors, publishers, actors and producers in contract negotiations.

The Firm represents publically held and privately owned companies, as well as smaller start ups in a wide range of trademark and copyright litigation including Lanham Act cases. For example, we have appeared for the most prominent, internationally known manufacturer of sauces, a foreign manufacturer of home appliances, and local businesses in a wide variety of matters where infringement, fair use, public domain and trademark dilution are litigated.

Recently, the firm appeared for a local distributor of Italian sauces who was sued in the Southern District of New York who claimed that the client’s label infringed the mark of a very prominent New York restaurant and retailer of pasta and sauce products. Smith Duggan defeated an attempt by the plaintiff to obtain an injunction and then prevailed on a Motion to Dismiss under the “likelihood of confusion” provisions of 15 USC §1125(a) (the so-called “Section 43(a) provision) even though the client’s company name was almost identical to the plaintiff’s corporate name. By addressing the matter forcefully and aggressively from the beginning, we were able to save the client’s business and end the case without the necessity of a long drawn out litigation.