Client Counseling, Brand Development and
Trademark Portfolio Management

• Counsel clients in areas of brand development, trademark policing and enforcement, protection and registration strategies and proper trademark usage

• Conduct and analyze trademark clearance searches and render opinions on availability

• Conduct domestic and international trademark investigations and watches

• Prepare and prosecute domestic and foreign trademark applications, and manage all post-registration affidavits, renewals, and related activities

IP Business Issues

• Conduct trademark due diligence and draft appropriate contract language in acquisition, merger, divestiture, secured financing and bankruptcy agreements

• Negotiate and draft trademark and copyright licenses, including licenses for franchises, joint venture agreements and intra-company intellectual property holding companies

• Counsel clients and draft confidentiality agreements

• Counsel clients on intellectual property preservation and enforcement in connection with employment issues such as non-compete agreements

• Review advertising copy and packaging for compliance with federal and state laws, regulations and guidelines, including false advertising and unfair competition

• Draft and review agreements between clients and the vendors of advertising-related products and services, such as promotion, marketing and co-branding agreements

• Draft Internet licenses and web-related agreements

Trademark, Copyright, False Advertising and Unfair Competition Litigation

• Litigate trademark and trade dress infringement, copyright, false advertising, unfair competition, cybersquatting, dilution, counterfeiting, trade secret and related lawsuits and appeals in federal and state court

• Litigate opposition and cancellation actions before the U.S. Trademark Trial and Appeal Board

• Direct and supervise trademark litigation throughout the world

Internet Issues

• Provide watch services to monitor domain names and establish ongoing programs to protect client’s domain names against cyber-pirates

• File and defend domain-name disputes under ICANN’s Uniform Domain-Name Dispute Resolution Policy (“UDRP”)

• Perform review and analysis of client websites, including advising clients on privacy, terms of use, trademark, and copyright issues in their websites

Patents and Patent Litigation

• Draft and prosecute domestic patent applications in the Mechanical and Computer Sciences arts

• Provide patentability, validity, infringement and right to use analyses and opinions

• Coordinate the international registration and/or application for patents

• Represent clients in patent infringement matters ranging from multimillion-dollar federal disputes to small disputes resolved out of court

• Draft contracts for the transfer or licensing of patents

Electronic Discovery Issues

• Represent clients in disputes over electronic discovery

• Advise clients on their preservation and production obligations with respect to electronically stored information.

• Provide analysis of client document retention program and consultation on electronic information management and discovery policies and protocol initiatives