Kelley Drye advises clients on the acquisition and enforcement of trademarks and copyrights, distribution and licensing arrangements, Internet questions, grey market and counterfeiting problems, marketing practices, and Section 43(a) Lanham Act advertising disputes.
The international flavor of Kelley Drye’s practice has proven advantageous in handling the diverse legal problems arising out of the globalized economy. Kelley Drye offers attorneys fluent in Japanese, Chinese, Korean, Hindi, French, Italian and German and has established
ties with law firms worldwide. The ability to call on these resources often proves invaluable in international trademark investigations and in sifting out and resolving counterfeiting and trade diversion problems.
Kelley Drye is especially suited to handle trademark litigation. The value placed on established brands has grown dramatically as has the cost of protecting those brands in court. We are not content with a simple cease and
desist agreement. Our objective is to recover, whenever possible, monetary damages as well as the expenses involved in enforcing trademarks and copyrights against infringers. We strive to devise a litigation strategy that is
cost-effective and tailored to reach the objectives our client sets for that particular case. The type of disputes we handle include:
- Trademark infringement, anti-dilution and unfair competition action in federal and state courts
- Actions for §43(a) Lanham Act violations, false advertising, and deceptive consumer practices in federal and state courts
- Copyright infringement actions in federal court
- Trademark proceedings in the Trademark Trial and Appeal Board of the United States Patent and Trademark Office
- Appeals to the Federal Circuit Court of Appeals
- Proceedings before U.S. International Trade Commission and U.S. Customs Service
In addition to litigation, Kelley Drye provides trademark counseling and manages domestic and international trademark portfolios on behalf of multinational clients. We establish corporate programs for protecting trademarks, trade dress and copyrights, and coordinate counterfeiting investigations and seizures actions.
Kelley Drye also assists clients with:
- Searching and clearing prospective trademarks and trade names
- All aspects of practice in the USPTO, including preparation and prosecuting of trademark applications, and representation of clients in adversarial proceedings before the TTAB
- Trademark portfolio maintenance and renewals in the U.S. and abroad
- Establishing corporate programs for protecting trademarks, trade dress and related business reputation and goodwill
- Negotiating and drafting licenses, distribution agreements, assignments and security agreements
Kelley Drye has brought or supervised anti-counterfeiting suits across the world, and is well-versed in combating the marketing of grey goods including:
- Counseling on international distribution systems and measures to alleviate product diversion and grey goods problems
- Coordinating investigations of counterfeiting activities here and abroad
- Conducting and supervising seizure actions
Kelley Drye provides copyright counseling including:
- Advising companies on outsourcing agreements
- Litigating disputes regarding ownership issues
- Acquisition and registration of copyrighted works
- Evaluation of ownership interests
- Developing copyright protection strategies
- Establishing policies and procedure to preserve proprietary information
- Drafting confidentiality agreements, work-for-hire agreements, assignments and licenses
Kelley Drye also handles design and trade dress issues such as:
- Advising on the challenges of protecting ornamental designs and consumer product shapes
- Counseling on trade dress vs. design patent protection
- Litigating related disputes
Our attorneys are fully conversant with the challenges the Internet poses to rights holders and the law which governs these issues. We have helped clients create web sites and resolve domain name, hyperlink and framing disputes. We also prepare agreements with content and Internet service providers and provide advice with respect to such agreements. Kelley Drye also counsels clients infringements of proprietary rights in cyberspace, including hyperlinking, framing, meta-tagging, and domain name disputes.
- We provide advice and prepare license agreements
- We prepare distribution agreements for branded goods and provide advice on related regulatory and antitrust issues
- We conduct due diligence investigations and audits with respect to trademarks, copyrights and other IP assets
- We prepare and record trademark and copyright assignments in the U.S. and abroad
- We record security interests in trademarks and copyrights and provide related advice
- We work with our clients to develop strategies and establish individualized corporate programs for protection of trade names, trademarks, trade dress copyrights, and related business reputation and goodwill, including worldwide enforcement programs
- We provide advice regarding advertising and promotional issues
- Represented liquor brand in trademark litigation. Obtained judgment for the client after bench trial in the Southern District of New York.
- Served as appellate counsel for a stock exchange. We were successful in reversing a summary judgment granted below in the Southern District of New York.
- Represented cosmetics brand in a trademark infringement action. We obtained a favorable settlement in the case in the Eastern District of New York.
- Defended distributor of motor scooters from claims of reverse passing off under the Lanham Act. The case, in the Western District of Washington, was dismissed with prejudice after denial of plaintiff’s preliminary injunction motion.
- Defended shoe manufacturer in trademark infringement litigation in the U.S. District Court for the Northern District of New York. Obtained dismissal of all charges against client and favorable settlement.
- Represented comic book publisher in bringing opposition proceeding before the U.S. Trademark Trial and Appeal Board. Opposition sustained on Summary Judgment, refusing registration of applicant’s trademark.
- Obtained judgment on behalf of an international beauty pageant enterprise in sustaining opposition after trial in opposition proceeding before the United States Trademark Trial and Appeal Board. Successfully prevented registration of applicant’s trademark.
- Defended a watch retailer in litigation brought by a major international luxury goods enterprise alleging trademark infringement and counterfeiting in the U.S. District Court for the Southern District of New York. Obtained dismissal of all claims against client and obtained favorable settlement prior to trial.
- Represented a publication in a successful trademark infringement and unfair competition suit in the Northern District of Illinois.
- Defended cosmetics brand in trademark infringement suit. Achieved favorable outcome when the court denied a preliminary injunction motion.
- Defended leading toy manufacturer in trade dress and copyright infringement action. Case dismissed by plaintiff following early discovery and motion practice.
- Successful defense of computer software case on behalf of our client in the Southern District of New York.
- Prosecuted copyright infringement and DMCA claims against computer game hackers; permanent injunction entered in the Northern District of Illinois.
- Represented an international restaurant corporation in defeating TRO and preliminary injunction motions alleging violations of federal and state trademark and anti-dilution statutes in the Eastern District of Missouri.
- Represented nutritional supplement maker in achieving a favorable settlement of Lanham Act claims asserted against competitor in the dietary supplements industry in the Northern District of California.
- Litigation counsel for international fashion designer in bringing copyright infringement action in the U.S. District Court for the Southern District of New York. Obtained permanent injunction in connection with favorable settlement prior to trial.
- Represented international beauty pageant enterprise in bringing a trademark and copyright litigation in the U.S. District Court for the District of Nevada. Obtained permanent injunction in connection with favorable settlement agreement prior to discovery.
- Represented international beauty pageant enterprise in bringing an ICANN Domain Dispute Proceeding before the WIPO Arbitration and Mediation Center. Obtained judgment in client’s favor ordering transfer of domain name to the plaintiff.
- Defended Brazilian newspaper publishing company in copyright infringement litigation in the U.S. District Court for Southern District of New York. Obtained dismissal of claims and obtained favorable settlement prior to discovery.
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For further information about Kelley Drye's Trademark and Copyright practice group, please contact:
Andrea L. Calvaruso
(212) 808-7853
acalvaruso@kelleydrye.com
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