Our Intellectual Property Practice Group includes attorneys with deep and diverse practice backgrounds and legal expertise. We understand the challenges that businesses are confronted with on a daily basis and endeavor to provide sensible, practical and real-time solutions to our clients. By using an interdisciplinary approach, our attorneys provide comprehensive solutions to today’s challenging and rapidly evolving technological, media driven and legal landscape. Our clients range from small startups to large, established Fortune 500® corporations.

INTELLECTUAL PROPERTY

INTELLECTUAL PROPERTY

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

The IP Practice Group works hand in hand with our Technology Law Practice Group to provide advice on technology-related and internet-related IP matters, such as the creation, licensing, use and distribution of online content, mobile apps, websites, social media and user-generated content, “work-made-for-hire” arrangements, and due diligence for intellectual property in M&A and securitization transactions.

SCOPE OF SERVICES

  • Copyright Fair Use
  • Copyright Licensing
  • Copyright Prosecution
  • Domain Names
  • Trade Dress
  • Trade Secret
  • Trademark Clearance Searches
  • Trademark Licensing
  • Trademark Policing Resolution Agreements
  • Trademark Portfolio Maintenance
  • Trademark Prosecution

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.

RELATED EXPERIENCE

  • Negotiated and drafted trademark licensing agreements for use of trademarks and logos in video games, websites, financial services products, films, animation, domain names, and artwork.
  • Analyzed and advised on patent claims and ability to tender such claims to Original Equipment Manufacturers (OEMs) and equipment suppliers.
  • Advised on applicability of immunity against certain state claims under the Communications Decency Act (CDA), and drafted responses to commercial misappropriation claims under state law based on information displayed through use of Microsoft’s Bing browser.
  • Handled the filing, prosecution, renewal and maintenance for a number of clients, including those on behalf of the first multi-state, transmission-only utility in the United States, an airport authority, providers of educational and convention services, jewelry designers, and a nationally certified Veterans Service Organization.
  • Drafted and served cease and desist letters, Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints or otherwise engaged in alternative methods of conflict resolution.
  • Conducted clearance searches and reports for an American Fortune Global 500© company whose subsidiaries provide insurance, investment management and other financial products and services to both retail and institutional companies throughout the United States and in over 40 countries.
  • Assisted in clearing word marks, logos and slogans on behalf of a provider of professional care and maintenance services and products in the Personal Protective Equipment (PPE) market.
  • Represented clients in administrative proceedings before the United State Patent and Trademark Office (USPTO) and the Trademark Trail and Appeal Board (TTAB) , as well as before the United States International Trade Commission (USITC).
  • Handled appeals such as those relating to a no-show sock design invention and a new photo sharing platform.
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.

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