We assist clients in the U.S. and globally throughout the world in the following areas:
Trademark Clearance
- U.S. and worldwide clearance searches and opinions
- Trademarks, trade dress, service marks, configuration marks, designs, logos
- Slogans, taglines, model names
Trademark Filing, Prosecution and Maintenance
- Trademark applications
- Trademark prosecution
- Maintenance and renewals
- Trademark portfolio management
Trademark Enforcement and Disputes
- Trademark infringement
- Anti-counterfeiting
- Unfair competition, passing off
- False advertising
- False designation of origin
- Ambush marketing disputes
- Dilution of a famous mark
- License, breach of contract disputes
- Oppositions, cancellations, revocations
- TTAB and civil litigation and appeals
- Concurrent use proceedings
- Cybersquatting, UDRP proceedings
- Consents to Register and Coexistence Agreements
Certification Marks, Collective Marks, Geographic Indications
- Clearance, registration, and portfolio management
- Policies, regulations
- License agreements and terms of use
- Enforcement – demand letter campaigns, takedowns, litigation
Brand Management and Counselling
- Counseling on the selection, protection and enforcement of brands
- Budgeting – planning, estimates, management
- Brand guidelines, corporate identity guidelines
- House marks, private label marks, model names
- Drafting IP policies
Customs Recordation and Training
- Customs recordals, customs training
- Assignments, title changes
- License agreements, registered user agreements
- Name and address changes
- Liens, security agreements, releases
Copyright Clearance and Registration
- Works of art, photography, movies, architecture, books, magazines, newspapers, articles, catalogs, musical compositions and recordings, sculpture, murals, websites, software, firmware
- Sourcing content, content agreements
- Fair use reviews and opinions
- Due diligence searches
- Clearance searches and opinions
- Permissions, indemnification agreements
- Museum policies and copyright management
- Public Domain investigations and opinions
- Registrations and recordals in the U.S. Copyright Office and foreign registries
- Registration of Online Service Providers/ Digital Millennium Copyright Act (“DMCA”) Agents
- Copyright Terminations
- Claims under the Berne Convention and Section 514 of the Uruguay Round Agreements Act of 1994 on the restoration of copyrights
- Clearance under the Visual Artists Rights Act (“VARA”) and moral rights provisions
Copyright Enforcement and Disputes
- Enforcement – demand letter campaigns, DMCA takedowns, litigation
- Anti-counterfeiting
- Accounting actions
- Defense of ASCAP, SESAC, BMI and other performing rights organizations
- Defense of Business Software Alliance (“BSA”) and Copyright Clearance Center (“CCC”) audits and claims
- License, breach of contract disputes
- Joint authorship disputes
- Fair use
- Destruction of copyright management information (“CMI”) disputes
- Moral rights and VARA disputes
Advertising, Marketing, Labeling and Packaging
- Advertising, marketing and promotion agreements
- Private label and white label agreements
- Label and packaging review and clearance
- Review of advertising claims under FTC regulations and guides (e.g., the Green Guide)
- Rights of publicity
- Character names and likenesses
- First Amendment rights
- Olympic symbols and other statutorily protected symbols
Licensing, Commercial, and M&A and Divestiture Transactions
- Trademark, copyright, trade secret, and patent license and assignment agreements
- Music agreements – record, artist, manager, publishing, PROs, Harry Fox, Sound Exchange, master recording, print license, synch license, mechanical license, background music
- Publishing agreements – author, publisher, agent, licenses
- Work-made-for-hire agreements, consulting agreements
- Software agreements – license, develop, Statements of Work
- IP due diligence, IP audits, preparation of Schedules of IP assets
- Negotiation and drafting of asset purchase, stock purchase, transition services, assignment, technology transfer, security and other agreements in M&A transactions
- Confidentiality and non-disclosure agreements
- Cooperation and joint venture agreements, memoranda of understanding (“MOU”)
- Distribution and sales representative agreements
- E-commerce, fulfillment, affiliate, marketing, hosting, content and other e-
commerce agreements - Terms of use, privacy policies, user agreements
- Data security, compliance and breaches
- SEO and search marketing and placement agreements
Domain Name Registration and Management
- Registrations and portfolio management
- Domain name acquisitions and transfers
- Domain name disputes, UDRP and other dispute resolution proceedings
- Domain name policies
Intercompany Licensing or Transfers of IP Assets
- Transfer pricing counseling
- Drafting of intercompany agreements
- Valuation studies
- Creation, management and wind-down of IP and other intangible asset holding companies (“Holdcos”)
- Counselling on assignment in gross and naked licensing risks
- Audit response and defense of Holdcos in in tax and IP challenges
Investigations, Watches and Monitoring
- Internet monitoring for infringements and counterfeits
- Pre-enforcement or pre-litigation investigations
- Automated watching of trademark applications (as filed, as published)
- Competitor watches and investigations
