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Trademarks, Copyrights& IP Transactions

We counsel clients regarding their trademark, copyright, and intellectual property transaction issues. Our practice includes preparing and prosecuting trademark and copyright applications, enforcing our clients' associated intellectual property rights, and handling a wide array of intellectual property-related agreements, including those involving software, technology, licensing, and the commercialization of our clients' intellectual property.

Overview

Trademarks, copyrights, and other forms of intellectual property (IP) are some of the most valuable assets a client can own or license. We assist a wide array of clients with practical and cost-effective legal advice in establishing, protecting, commercializing, and enforcing their trademarks, copyrights, and other forms of IP both domestically and internationally. Our clients include owners of some of the world’s most famous brands along with emerging brands of individuals and entrepreneurs. For tech-based transactions, we represent manufacturers and start-ups in an array of industries, drafting and negotiating various types of software and IP contracts. 

Trademarks

Our attorneys and staff handle our clients’ trademark needs from cradle to grave, from assessing the availability and registrability of potential marks to efficiently searching, clearing, filing, and prosecuting applications (both in the United States and abroad) to enforcing and commercializing those rights.

In addition to procuring trademarks and managing global intellectual property portfolios, our attorneys counsel clients on domain name issues and develop and implement strategies for protecting intellectual property rights on the internet, including taking action against cybersquatters, handling take-down notices, and reviewing and developing related website policies.

We provide clients with practical and cost-effective advice regarding these assets, including how, when, and where to protect those rights; using ownership and licensing strategies; and protection and enforcement programs, including ways to prevent the importation and exportation of counterfeit products through registration with US Customs and Border Protection. 

When it comes to enforcement, our attorneys enforce and defend our clients’ intellectual property in courts throughout the United States and abroad and regularly represent our clients’ interests in quasi-judicial adversarial proceedings, such as in cancellation and opposition proceedings before the US Patent and Trademark Office (USPTO).

In addition to managing trademark portfolios for our domestic clients, our attorneys have developed relationships with foreign law firms with whom we network for filings throughout the world, maintaining those relationships through regular attendance at International Trademark Association (INTA) programs and events.

Copyrights

We perform a full suite of copyright services regarding this often misunderstood form of intellectual property that protects “original works of authorship.” We work with clients to strategize, prepare, file, and prosecute applications (including requests for reconsideration) for various types of works, such as photographs, sculptures and other artwork, music, books, and software. For the latter, we advise clients on the nuances of registration, protecting trade secrets within software source code, and guiding our clients in the submission of deposit material as permitted by the US Copyright Office. 

We also analyze the chain of title from the author to the owner and, when appropriate, prepare “work made for hire” and other copyright transfer assignments and agreements to fully vest title in the owner. Understanding copyrights, their scope, and the remedies available can offer significant advantages both as deterrence and in damages through enforcement, such as when a copyrightable work is timely registered in accordance with the US Copyright Act. For example, a valid certificate of copyright can entitle the “prevailing party” in litigation to an award of costs, including attorney’s fees. 

In addition to traditional enforcement through litigation, our attorneys often rely on alternative dispute resolution strategies like mediation for instances such as the receipt of “cease and desist” letters or for those charged with infringement, and including the development of cost-effective litigation strategies that often lead to efficient and amicable settlements. 

IP Transactions

Our attorneys handle a wide range of contracts and transactions involving IP. Helping our clients meet the demands of the ever-changing fields of technology and commercialization, we regularly provide strategic counseling, drafting, and negotiation involving a wide range of deal types and technologies, such as IT, software, platforms, websites, mobile apps, joint development, manufacturing, resale, distribution, licensing of intellectual property, and asset purchase. 

We make a concerted effort to stay abreast of evolving technologies, leveraging our attorneys’ hands-on experience in the areas of software development, website development, software-as-a-service (SaaS) deployment, hardware manufacturing, and the launch of mobile apps. For routine transactions, we use our toolbox of contract templates, such as online terms, privacy policies, nondisclosure agreements (NDAs), and instruments recordable with the USPTO. 

Our attorneys provide advice regarding cyber-risk liabilities, data protection obligations, and compliance with data privacy laws, including the California Consumer Privacy Act (CCPA), the US Health Insurance Portability and Accountability Act (HIPAA), and the US Family Educational Rights and Privacy Act (FERPA), seamlessly collaborating with our European associates to provide advice regarding the European Union’s General Data Protection Regulation (GDPR). 

Furthermore, in support of our clients, we prepare and record IP assignments, security interests, and releases with the USPTO; perform IP searching, analysis, and reporting, including chain of title reports; analyze breach of contract issues, and handle breach notice and breach cure letters; and analyze IP infringement allegations, handling demand letters, settlement negotiations, and settlement agreements.

Representative Experience
  • Successfully argued against a refusal of registration citing registration covering an identical mark by distinguishing the applicant's goods and channels of trade from those covered by the cited registration.

  • Serves as outside trademark counsel to an international presenter of artistic programming and arts education and manages its international trademark portfolio.

  • Successfully enforced a client's federal trademark registration through a cease and desist letter and encouraged the infringer to immediately adopt a less-similar mark.

  • Serves as lead litigation trial counsel for a global cigar company.

  • Managed the domestic enforcement of trademark rights for an apparel and headwear company.

  • Collaborated in the clearing, filing, and prosecution of trademark applications for the global rebranding of a pharmaceutical company.

  • Managed the worldwide trademark portfolio for a national alcohol beverages manufacturer.

  • Defended a footwear manufacturer and retailer in a trademark-infringement action that was resolved favorably prior to trial.

  • Represented a health care provider in a trademark-infringement action that was resolved favorably prior to trial.

  • Represented a medical device manufacturer in a successful uniform domain name dispute resolution policy (UDRP) proceeding that resulted in the transfer of an infringing domain name.

  • Served as trial counsel in a trade-dress infringement action that resulted in a favorable jury verdict of noninfringement for a specialty paper products manufacturer.

  • Serves as outside trademark counsel for a global telecommunications manufacturer, including counseling on the selection and adoption of new brands, clearing and filing new marks, and maintaining its global trademark portfolio. 

  • Represented a publicly traded pharmaceutical manufacturer in the drafting and negotiation of international product development agreements as well as patent and know-how license agreements.

  • Represented a Fortune 500 energy company in drafting, negotiating, and successfully closing a multimillion-dollar asset purchase agreement for the acquisition of a solar-power generation site.

  • Representing a hospital system in developing and implementing a product champion program for its physician-inventors, including filing patent applications, providing counseling for the procurement of prototype development services and business development consulting services, performing a legal review of marketing platforms, and drafting and negotiating commercialization agreements.

  • Represented a multinational automotive and defense manufacturer, providing counseling and advice with respect to its internal processes and procedures for the processing of personal employee data by its divisions located in various states of the United States.

  • Represented a Fortune 500 energy company, handling the revision and negotiation of contracts related to the development, supply, and licensing of energy systems and related technologies.

  • Represented a gaming software manufacturer, preparing a service agreement for hiring freelance developers and handling the revision and negotiation of a product development agreement with a gaming solution provider in the casino industry.

  • Represented an educational organization in revising and negotiating a master services agreement (MSA) and statement of work (SOW) relating to information technology support for a network of over 20 schools.

  • Representing a university in the drafting and negotiation of a wide range of information technology agreements, including the acquisition, implementation, and maintenance of a multicampus unified communications system operable through voice over internet protocol (VoIP).

  • Successfully defended a medical device manufacturer against an infringement claim brought by a licensor of enterprise resource planning software, securing an amended software license agreement that clarifies the scope of the permitted use.

  • Representing an offshore provider of a teaching and learning platform, handling the review, revision, and counseling for the provider’s SaaS agreements with various universities in the United States.

  • Represented a financial technology company in preparing and implementing an array of contracts between affiliated banks, credit processors, payment processors, cloud hosts, and end-users.

  • Represented a health care consulting company in drafting and negotiating a platform services agreement for procuring a white label instance of an online platform for managing patient risk, capturing governmental reimbursements, and reducing the risk of noncompliance with reimbursement regulations.

  • Represented a software manufacturer in drafting a master license agreement (MLA) and service level agreement (SLA) related to its software as a service (SaaS) for the management of data in energy and exploration businesses within the oil and gas industries.

  • Represent a manufacturer of software and hardware in the media and broadcasting industry, structuring, drafting and negotiating a wide range of agreements, including software-as-a-service (SaaS) agreements, service level agreements (SLAs), end user license agreements (EULAs) and application developer program agreements.

  • Representing a global clinical trial data management company in structuring, implementing, and updating its online and web portal terms (addressing the European Union’s General Data Protection Regulation (GDPR), the California Consumer Privacy Act (CCPA), the US Health Insurance Portability and Accountability Act (HIPAA) and other privacy-related laws), including the preparation of a multinational privacy policy, privacy notice, cookie policy, terms of use, and portal terms.

  • Representing a provider of cloud-based health care solutions, preparing workflows, agreements, and policies and templates regarding deal flow, quoting, master licensing, subscriptions, business associates, resales, referrals, terms of use, acceptable use policy, privacy policy, enrollment terms, information sensitivity policy, and employees.

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