Our firm handles trademark, copyright, unfair competition, technology, and related matters, including counseling and clearance, registration and maintenance, licensing and exploitation, technology consulting and agreements, and enforcement and litigation matters worldwide.
Our attorneys have served clients in numerous industries, including consumer products, pharmaceuticals, financial services, medical devices, biotechnology, health care, media, retail services, entertainment, publishing, fashion, food and beverage, communications, technology and software, and schools and universities. We are able to combine the legal experience, expertise and business savvy needed to help build, protect and enhance intellectual property and the value of brands and content, and to construct practical solutions to complex intellectual property issues.
Intellectual Property Rights Clearance
We regularly perform and analyze clearance searches and provide opinions regarding the availability of trademarks, worldwide. We also advise on copyright clearance issues, considering originality, availability, fair use and infringement; as well as on advertising and social media clearance issues.
Acquisition, Maintenance and Management of Intellectual Property
We assist our clients with the acquisition, maintenance and management of their intellectual property, and work with them to develop individual strategies to maximize the value of their intangible assets in the most cost-effective manner. Our lawyers assist with the entire trademark and copyright registration process; including maintaining our clients’ trademark portfolios and handling maintenance and renewal filings. We advise clients regarding exploitation of proprietary rights in the United States and internationally, including negotiating and drafting license agreements, strategic alliance and software development agreements, work-for-hire and non-compete agreements, confidentiality agreements, distribution agreements, and joint ownership and author agreements. Our expertise includes providing due diligence for mergers and acquisitions, and related worldwide assignment, merger and name change filings.
Enforcement of Intellectual Property Rights
We have developed and implemented enforcement programs for well-known brands. We police, protest and prosecute trademark and copyright infringement, unfair competition and related rights infringements. We have substantial experience resolving our clients’ disputes at the Trademark Trial Appeal Board, and in litigation, mediation and arbitration, worldwide, including case evaluation, pre-litigation negotiations, development of litigation strategy and trial. Additionally, we evaluate and litigate cases involving software and technology. We seek creative solutions to disputes and make use of mediation and arbitration as appropriate. We also handle cybersquatting matters and have recovered numerous domain names.
Technology and Software (Products and Services)
We negotiate and draft technology agreements, including options for technology rights, license agreements, assignment agreements, click-through end-user agreements, software development agreements, and material transfer agreements. Our experience includes counseling clients regarding their trade secrets and the protection and enforcement thereof. We regularly negotiate agreements in the life science field, including co-development and licensing agreements. Additionally, we regularly negotiate and draft technology consulting and services agreements for clients and advise them on potential risks and necessary protections.
Representative experience includes:
- Domestic and worldwide trademark searching and clearance
- Domestic and worldwide trademark application and registration
- Domestic and worldwide trademark assignments, merger and name change filings
- Copyright clearance issues
- Copyright applications and registration
- Advertising and social media clearance issues
- Cease and desist letters
- Trademark disputes before the Trademark Trial and Appeal Board (TTAB) and worldwide trademark offices
- Copyright infringement actions
- Trademark infringement and dilution actions
- Breach of contract claims
- Domain name proceedings
- Unfair competition, unjust enrichment and fraud claims
- Trade secret litigation
- Royalty disputes
- Managing worldwide enforcement programs
- Domestic and worldwide exploitation of proprietary rights including negotiating and drafting license agreements, work-for-hire agreements, copyright licenses, distribution agreements, joint ownership and author agreements
- Due diligence for mergers and acquisitions
- Technology agreements including options for technology rights, end-user license agreements, development agreements, material transfer agreements
- Life sciences co-development and licensing agreements
- Counseling, policies and training modules for the protection of trade secrets
- Preparation of technology consulting and services agreements
- Represented proprietary accounting software developer in the negotiation of strategic alliance and licensing agreements with investment funds, banks, and strategic partners