Practice Group | Bassford Remele

Intellectual Property

Bassford Remele provides comprehensive intellectual property (IP) and trademarking services to protect your valuable assets and properly manage your intellectual property rights. We provide strategy and counseling to help guide you through the process of licensing, maintenance, filing, and infringement support. Our firm excels in enforcing your IP and trademark rights through cease and desist letters and other protective measures. For severe infringements, we are prepared to represent your interests in litigation, ensuring a robust defense of your intellectual property rights. Our comprehensive trademark services are designed to offer peace of mind, knowing that your brand is not only protected but also positioned for enduring success and recognition in your industry.

With hundreds of completed registrations for our clients, we successfully advise our clients on selection and protection of their identity. We evaluate the benefits of securing trademark registrations and handle the registration process. We represent clients in contested proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office.

IP Transactions and Licensing

We provide comprehensive intellectual property support, helping you negotiate, draft and review contracts related to the transfer of intellectual property. We ensure your business has the protection it needs to safeguard its valuable intellectual property. 

SERVICES

  • Intellectual property portfolio strategy and consulting
  • Trademark counseling
  • Trademark clearance searches, filing/registration and maintenance
  • Transactions and licensing
  • False advertising and infringement protection counseling 
  • Initial portfolio strategy and counseling 
  • Copyright counseling

Our clients and focus areas include:

  • Corporate and in-house legal
  • Emerging companies practice
  • Family business practice
  • Non-profit
  • Small business
  • Sale and purchase transactions
  • International practice

Representative Cases

Represented a global computer-equipment company, obtaining an award in excess of $625 million in a complex trade secret arbitration.

Represented a global technology company in a patent infringement claim involving hard disk drive technology.

Defended a national credit-reporting company, obtaining a defense jury verdict after a six-week trial in a complex trademark dispute.

Represented Swiss doll maker against retailer, distributor and manufacturer for making knock-off dolls, inter alia trade dress infringement, false advertising and trademark dilution. Heidi Ott A.G. v. Target Corp. et al.,153 F. Supp. 2d 1055 (D. Minn. 2001).

Defended travel agency in trademark infringement lawsuit brought by the producers of the Lord of the Rings movies. Matter decided in the defendant’s favor on the grounds of laches. Saul Zaentz Co. v. Wozniak Travel, Inc., 627 F. Supp. 2d 1096, 89 U.S.P.Q.2d 1665 (N.D. Cal. 2008).

Represented a national restaurant chain, obtaining a summary judgment in a complicated trademark and trade dress infringement claim.

Represented a health care provider, obtaining resolution of a copyright and trademark infringement action.

Defended a large health system, obtaining a favorable resolution in a patent infringement claim involving security systems.

Represented successful restaurant chain in favorably resolving Trademark Trial and Appeal Board proceeding, resulting in the registration of its trademarks.

Represented a marketing company, obtaining dismissal of a trade secret dispute.

Represented a global medical-device company, obtaining a summary judgment in a case involving claims of misappropriation of trade secrets and confidential information.

Defended a major software company against multiple software vendors, favorably resolving claims of copyright and trademark infringement.

Defended a global manufacturing company, obtaining a decision addressing the application of the law of the flag doctrine in patent litigation cases. M-I Drilling Fluids UK Ltd. v. Dynamic Air Inc., 99 F. Supp. 3d 969 (D. Minn. 2015).

Represented an advertising agency, obtaining an order in a copyright dispute regarding a television advertisement and limiting the scope of discovery and damages before the matter was resolved.

Defended copyright, counterfeiting, trademark infringement and RICO matter for retailer involving the sale of videos. (E.D. Cal. 2010).

Represented plaintiff in gray market/counterfeiting unfair competition matter regarding auto parts sold under plaintiff’s trademark. (D. Minn. 2006-2009).

Successful defense of a preliminary injunction motion in a color trade dress matter involving ice fishing shelters.

Defended trade dress infringement claim involving surgical devices. (D. Minn.).

Represented an auto-body supply distributor, obtaining a favorable award in a patent infringement claim.

Represented a software inventor, obtaining dismissal of a large claim by a major bank under a patent license agreement.

Represented a tanning salon, obtaining dismissal of an unfair competition claim between competing salon chains.

Brought declaratory judgment against trademark registrant asserting infringement claim and counterclaimed for cancellation of trademark registration pertaining to use of mark on firearms and silencers. (D. Minn).

Brought declaratory judgment against trademark registrant asserting infringement and opposing a trademark registration for snack chip. (D. Minn).

Brought declaratory judgment against estate of John Dillinger pertain to claims of trademark infringement regarding use of DILLINGER as a trademark. (D. Minn).

Patent inventorship dispute; Stern v. Columbia University, 434 F.3d 1375 (Fed. Cir. 2006).

Brought declaratory judgment against trademark registrant asserting infringement regarding mark for and opposing a trademark registration for chocolate candies. (D. Minn).

Prosecuted breach of contract claims and defended trademark infringement and cyber-squatting claims. Convey Compliance Systems, Inc. v. 1099 Pro., Inc., 443 F.3d 327 (4th Cir. 2006).

Prosecuted and tried successor liability claims and in post-trial established an equitable lien on trademark portfolio. (D. Minn. 2002).

Defended patent infringement claim involving method of reusing containers in the semiconductor industry. (D. Minn. 2004).

Represented plaintiff in patent dispute over locking mechanisms. Cargo Protectors, Inc. v. American Lock Co., 92 F. Supp. 2d 926 (D. Minn. 2000).

Comments from clients and the legal community:

Bassford Remele is very experienced in trademark legal matters. They have a responsive and strategic approach to litigations and communicate well with clients.


These comments were collected as part of the U.S. News - Best Lawyers® "Best Law Firms" research process.

Accolades

2024 Best Lawyers - Commercial Litigation
2024 Metropolitan Tier 1 Firm in the area of Commercial Litigation
Chambers 2024 Rank
Ranked in Chambers 2024
2024 Best Lawyers - Bet-the-Company Litigation
2024 Metropolitan Tier 1 Firm in the area of Bet-the-Company Litigation