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. We represent manufacturers and start-ups in an array of industries, drafting and negotiating various types of contracts related to the development, licensing, and commercialization of IP.
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 attorneys’ 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, IP due diligence, and negotiation involving a wide range of deal types and technologies, such as joint development, manufacturing, resale, distribution, licensing of intellectual property, asset purchase, and M&A transactions. For routine transactions, we use our toolbox of contract templates, such as nondisclosure agreements (NDAs), security interest agreements, and instruments recordable with the USPTO.
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.