Services
Trademarks
When a company plans to launch a new product or service, clearing and protecting the trademarks that will be used to identify the product to the public is essential. I offer a full range of trademark search and clearance services, as well as United States and international trademark filings. I can file applications for many international jurisdictions from my own desk using the Madrid Protocol. For countries that have not signed the Madrid Protocol (or if there are other reasons not to make Madrid filings), I call upon my vast network of foreign associates from around the globe to assist with obtaining trademark protection in relevant countries.
I also handle enforcement matters, both offensive and defensive. At the initial stage, this typically consists of sending or responding to cease and desist letters. Many times, a settlement can be negotiated at this point. If not, I have the experience and capability to escalate enforcement efforts, through the filing of opposition or cancellation proceedings before the Trademark Trial and Appeal Board, and/or litigation in federal or state court.
Industries
I have provided trademark advice and counsel across a wide variety of industries, including the following:
Computer hardware
Computer software
Medical devices
Health care services
Dietary and nutritional supplements
Electronics
Toys and games
Media and entertainment
Food products
Business consulting
Advertising
Clothing and apparel
Sporting goods
Cosmetics
Bar and restaurant services
Legal services
Copyrights
Copyright protection covers more than just books, plays, movies, and music. In fact, copyright is broadly defined to encompass any creative work of authorship “fixed in a tangible medium of expression,” in other words, written down, recorded, pressed into vinyl, or carved on a cave wall.
More commonly, in today’s world, copyright is used to protect written content, software code, YouTube videos, and movies. But other items may also qualify for copyright protection, if they contain the requisite level of creativity, including product labels and company logs. In these instances, copyright protection can sometimes be used to enhance the trademark protection that is otherwise available for a company’s products.
If you are the author of a work of creative expression, you should consider obtaining a copyright registration as soon as possible. Although you are the copyright owner the moment you create the work and fix it in a tangible medium of expression, prompt registration of the work is often necessary in order to qualify for certain remedies in the event your work is infringed. These remedies include statutory damages of up to $150,000 per work and recovery of attorneys’ fees.
I have handled copyright issues involving:
Books
Visual arts
Computer software
Musical Instrument Digital Interface (“MIDI”) music files
Musical compositions
Licensing
Textiles/fabric designs
Business Transactions
Contracts form the foundation of business. A well-drafted agreement promotes the goals of both parties to the contract, and clearly defines the terms that will govern their business relationship. It can also reduce the risk of litigation, which is costly, time-consuming, and can draw a company’s focus away from its long-term business objectives.
I’ve worked with many companies, big and small, to reach agreements with business partners, independent contractors, customers, suppliers, and distributors, among others. Often, the key terms revolve around price, delivery time, warranties, reasons and timing of termination, and remedies for breach. But sometimes, insurance, indemnification, or other provisions are crucial. I can work with you to customize your agreement to fit your needs and accomplish your business goals.
Representative types of agreements
Intellectual property licenses
Non-disclosure agreements
Distribution agreements
Consulting agreements
Independent contractor agreements
Minimum advertised pricing policies
Sponsorship and endorsement agreements
Intellectual property transfers, including trademark and copyright assignments in various contexts
Mergers and acquisitions (intellectual property aspects)
Advertising, Domain Names, and Privacy
Protecting your trademark is the first step in building your brand, but promoting the mark is equally important. There are a myriad of state and federal laws and regulations spelling out what you can and cannot do or say when advertising and promoting your products. I can provide advice and counsel at the outset of an advertising and promotional campaign, to help you avoid common landmines and pitfalls, such as FTC enforcement actions, cybersquatters, and class action lawsuits.
For example, many companies use online sweepstakes, often leveraged through social media, to build “buzz” about their products. But if a promotion includes a prize, chance, and an entry fee (or some other consideration), it is very likely an illegal lottery. In addition, some states have very broad and restrictive gambling laws. I can help you structure your online promotions in a way that minimizes your risk.
Contact me to discuss issues relating to advertising and promotion, including:
- Recovery of domain names from cybersquatters
- NAFTA compliance
- Advice and counsel regarding acquisition of domain names in new generic top-level domains (“gTLDs”)
- FTC compliance and other regulatory guidelines
- Website terms and conditions
- Internet privacy, including California “Do Not Track” laws
- Games, sweepstakes and contests
Litigation
Litigation can be expensive, time-consuming, and emotionally draining. But sometimes, it is necessary to protect your brand. And of course, if you are named as a defendant in a lawsuit, you have no choice in the matter. I have extensive experience representing both plaintiffs and defendants in many types of cases, with an emphasis in the area of intellectual property and related claims. I have significant experience in preliminary injunction practice, both as a plaintiff seeking an injunction, and as a defendant opposing the injunction.
When you have to go to court, you need someone on your side who can draw upon experience to help you make strategic decisions, at the pleading phase, in discovery (including experts), and through summary judgment and trial. You need someone with strong written and verbal communication skills who can persuade the judge and jury that the facts and the law are on your side. And often times, you need someone who can help you resolve the case at an early stage, in order to control costs and/or minimize potential liability.
Litigation practice areas
Trademark infringement
Unfair competition
False advertising
Right of publicity
Defamation
Copyright infringement
Antitrust
Breach of contract