Trademark and Copyright Prosecution

Our Trademark and Copyright counseling practice takes a whole-business approach to building and protecting our clients’ intellectual property. Our trademark and copyright practice is unique in that our primary attorneys have experience in both IP prosecution and litigation. While we have prosecuted many thousands of trademark applications in the U.S. and globally, we understand there is more to trademark practice than the mass filing and ministerial maintenance of trademark applications. We represent and advise clients in all aspects of trademark and copyright law, including clearance, prosecution, maintenance and enforcement of trademarks and copyrights worldwide; distribution and licensing arrangements; grey market and counterfeiting issues; marketing practices; and adversarial proceedings in U.S. Federal District Court, U.S. Trademark Trial and Appeal Board (TTAB) and ICANN Domain Dispute proceedings.

Trademark Counseling, Prosecution and Filings

We provide trademark counseling and manage domestic and international trademark portfolios on behalf of national and multinational clients. Our services include:

• Trademark clearance and related counseling
• Prosecution of trademark applications in the U.S. and abroad
• Managing worldwide trademark portfolios, including trademark audits, maintenance and enforcement
• Managing worldwide assignment programs
• Strategic counseling and creation of corporate programs for protecting and strengthening trademarks, trade dress and related business reputation and goodwill
• Negotiating and drafting license, distribution, consent and other related intellectual property agreements
• Representation of clients in TTAB proceedings

Design and Trade Dress Protection

We also handle design and trade dress issues such as:

• Counseling clients regarding developing, maintaining and strengthening trade dress rights
• Counseling regarding trade dress vs. design patent protection

Copyright

We provide copyright counseling, including:

• Acquisition and registration of copyrighted works
• Evaluation of ownership interests and content clearance
• Developing copyright protection strategies
• Negotiating and drafting agreements, including NDA agreements, work-for-hire agreements, assignments and license agreements
• Enforcement of copyright interests, including DMCA takedown notices, managing enforcement programs and copyright litigation

Licensing, Distribution and Corporate Transactions

• We provide advice, and negotiate and draft trademark and copyright 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

Internet

• Our attorneys are fully conversant with the challenges the Internet poses to rights holders and the law that governs these issues. Our services include:
• Assisted brand owners in applying for the New gTLDs and enforcing rights pursuant to ICANN related Dispute Resolution Policies
• Counseling regarding creation and content of websites
• Advice and representation regarding domain name, hyperlink and framing disputes
• Preparing and filing copyright applications for website content and source codes
• Negotiation and drafting agreements with content and Internet service providers
• Providing representation and advice regarding protection of clients’ proprietary rights in Internet-related matters, including ICANN Domain Dispute proceedings