Our Expertise

Global Infringement and Unfair Competition Claims and Actions

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 – infringement and unfair competition 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)

Related Rights

  • 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 and Internet

  • 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
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