INTELLECTUAL PROPERTY

INTELLECTUAL PROPERTY

Attorneys in the Firm’s Intellectual Property Group are highly experienced in a wide variety of trademark, copyright and trade secret matters, including prosecution, licensing and litigation. They have extensive backgrounds both in house and in large national firms and boutique IP law firms. Our attorneys have represented a wide range of sophisticated clients before the United States Patent & Trademark Office (USPTO), the International Trade Commission (ITC) and Internet Corporation for Assigned Names and Numbers (ICANN).

The IP Group’s practice covers key aspects of traditional intellectual property law, including trademarks, copyrights, domain names, social media “handles”, trade dress, proprietary information and trade secrets, unfair trade practices and unfair competition (and related reviews, advice, fillings, due diligence and dispute resolution, including litigation).

Firm attorneys provide advice, preparation, prosecution and maintenance of federal, state, and foreign trademark registrations; clearance of proposed trademarks; strategic selection, management, and enforcement of rights in marks; purchase, sale, and dispute resolution regarding copyrights, trademarks, domain names and 800/900 phone numbers; licensing trademarks; due diligence in acquisition and sale of trademarks, domain names and phone numbers; and enforcement of trademark and domain name rights, including “cease and desist” letters and UDRP proceedings.

SCOPE OF SERVICES

  1. Trademark Clearance Searches
  2. Trademark Prosecution
  3. Trademark Portfolio Maintenance
  4. Trademark Policing Resolution Agreements
  5. Trademark Licensing
  6. Trade Dress
  7. Domain Names
  8. Copyright Prosecution
  9. Copyright Licensing
  10. Copyright Fair Use
  11. Trade Secret

DESCRIPTION OF SERVICES

TRADEMARK CLEARANCE SEARCHES

We conduct trademark clearance searches for a wide variety of clients including financial institutions, insurance companies, convention services organizations, education and entertainment companies, consumer product and services, online services and others, including knockout and full search reports and reviews, investigation of relevant marks, and execution of concurrent use and other agreements, as feasible.

TRADEMARK PROSECUTION

Our attorneys have prepared and filed hundreds of U.S. and international trademark applications, and responded to office actions and other communications from the U.S. Patent and Trademark Office, regarding trademark, service marks, logos and graphic designs for a wide variety of clients including insurance companies, financial institutions, convention services organizations, education and entertainment companies, online services, consumer goods manufacturers, celebrity talent, software and service providers, non-profits and small businesses, and others.

TRADEMARK PORTFOLIO MAINTENANCE

We monitor and maintain domestic and international trademark portfolios for clients in various industries, with portfolios ranging from under ten marks to hundreds of marks.

TRADEMARK POLICING RESOLUTION AGREEMENTS

We negotiate and draft settlement agreements including concurrent use, licensing and/or transfer of trademarks for financial investment and other entities.

TRADEMARK LICENSING

We negotiate and draft trademark licensing agreements for use of trademarks and logos in video games, websites, financial services products, films, animation, domain names and artwork.

TRADE DRESS

We perform apparel product reviews, for clients within the Retail Industry, to assess potential trade dress infringement.

DOMAIN NAMES

We negotiate and draft agreements for the transfer of control of domain names, including escrow funds arrangements, and have filed UDRP actions regarding trademark and other infringement in use of domain names, including by those with a privacy/identity-protected registrar.

COPYRIGHT PROSECUTION

We prepare and file copyright applications for a wide variety of creative works, including software code, educational books, jewelry designs and animation, and have advised on application of the “fair use” doctrine and “works made for hire” regarding rights in digital content and other works.

COPYRIGHT LICENSING

We negotiate and draft copyright licensing agreements on behalf of both licensors and licensees in connection with use of works in publications, websites, compilations, television programs, and streaming and social media.

COPYRIGHT FAIR USE

We analyze and advise on whether various uses of Internet-available and other works qualify as “fair use” under the U.S. Copyright Law.

TRADE SECRET

We advise clients on creation and protection of trade secrets, including drafting non-disclosure agreements for a wide variety of protected information, and have advised a NY State Supreme Court Justice on certain contested trade secret claims in a litigation involving allegations of stolen source code by a departing employee.

TRADEMARK CLEARANCE SEARCHES

We conduct trademark clearance searches for a wide variety of clients including financial institutions, insurance companies, convention services organizations, education and entertainment companies, consumer product and services, online services and others, including knockout and full search reports and reviews, investigation of relevant marks, and execution of concurrent use and other agreements, as feasible.

TRADEMARK PROSECUTION

Our attorneys have prepared and filed hundreds of U.S. and international trademark applications, and responded to office actions and other communications from the U.S. Patent and Trademark Office, regarding trademark, service marks, logos and graphic designs for a wide variety of clients including insurance companies, financial institutions, convention services organizations, education and entertainment companies, online services, consumer goods manufacturers, celebrity talent, software and service providers, non-profits and small businesses, and others.

TRADEMARK PORTFOLIO MAINTENANCE

We monitor and maintain domestic and international trademark portfolios for clients in various industries, with portfolios ranging from under ten marks to hundreds of marks.

TRADEMARK POLICING RESOLUTION AGREEMENTS

We negotiate and draft settlement agreements including concurrent use, licensing and/or transfer of trademarks for financial investment and other entities.

TRADEMARK LICENSING

We negotiate and draft trademark licensing agreements for use of trademarks and logos in video games, websites, financial services products, films, animation, domain names and artwork.

TRADE DRESS

We perform apparel product reviews, for clients within the Retail Industry, to assess potential trade dress infringement.

DOMAIN NAMES

We negotiate and draft agreements for the transfer of control of domain names, including escrow funds arrangements, and have filed UDRP actions regarding trademark and other infringement in use of domain names, including by those with a privacy/identity-protected registrar.

COPYRIGHT PROSECUTION

We prepare and file copyright applications for a wide variety of creative works, including software code, educational books, jewelry designs and animation, and have advised on application of the “fair use” doctrine and “works made for hire” regarding rights in digital content and other works.

COPYRIGHT LICENSING

We negotiate and draft copyright licensing agreements on behalf of both licensors and licensees in connection with use of works in publications, websites, compilations, television programs, and streaming and social media.

COPYRIGHT FAIR USE

We analyze and advise on whether various uses of Internet-available and other works qualify as “fair use” under the U.S. Copyright Law.

TRADE SECRET

We advise clients on creation and protection of trade secrets, including drafting non-disclosure agreements for a wide variety of protected information, and have advised a NY State Supreme Court Justice on certain contested trade secret claims in a litigation involving allegations of stolen source code by a departing employee.

NMSDC_2
NAMWOLF_2