ACCOMPLISHMENTS
Click here for case studies of some of our of Intellectual Property Law counseling accomplishments on behalf of our beloved clients.
Or, below are quick summaries of numerous accomplishments:
Obtained Permanent Injunction and payment of client’s attorney’s fees against one of the country's largest media companies whose major investor is one of the largest Venture Capital funds in Silicon Valley. Infringing goods were destroyed.
Conducted an Intellectual Property (“IP”) Review and Audit focused on patents and trade secrets. Ensure that the company had identified and catalogued its entire IP portfolio. Developed extensive guidelines and a process to comb through the company’s existing assets. Developed methods to properly protect its IP portfolio. Developed and implemented the best available systems to identify offensive patenting opportunities. Created methods to identify and respond to defensive IP problems. Educated all IP users about proper IP use and the new guidelines.
Analyzed the entire legal systems of a maturing private Internet and software firm, including Intellectual Property systems, technology development systems, outside developer relationships, international e-commerce and Internet legal analysis, their web site, the customer confidentiality policy, capital formation, the Employee Handbook and Key Executive Employment Agreements. We created a Trade Secrets Policy to protect the company’s valuable software programming.
Obtained damages from one of America's largest online trading firms for failed execution of trading instructions during the first hours of IPO of one of America's hottest IPO offerings in 2014
Successfully defended my client against an Internet copyright troll. Researched the law, the history of the copyright troll and asserted defenses as to jurisdiction and procedure, leading to the plaintiff dropping lawsuit
Reversed the decision of an Examining Attorney at the United States Trademark Office where the Examining Attorney had originally decided that our client's trademark application was likely to be confused with a prior trademark registration; application eventually became a registration. Registration became basis to build a brand
Assisted in negotiating a Technology Agreement between client and General Motors to introduce the first-ever worldwide automotive GPS product- later to be named On-Star®
Created software theft-prevention and response Program for printing equipment firmware. Assessed international law; created Program Guidelines and enforced customer violations
Drafted advantageous terms for the buyout of a retiring one-third partner from his two business partners
Prosecuted click-fraud case against click provider. Developed novel legal theory that a click is a “good” thereby providing us additional legal rights. Accomplish client’s goals on time and on budget.
Represent clients in buying and selling businesses
Negotiated and drafted terms for a Software License Agreement in the Customized images business to consumer online e-commerce
Developed brand protection program, offensive and defensive, through use of trademarks and domains so that client positioned to exclusively possess rights to their brand. Recommend acquiring domains proactively to provide internet fence around brand.
Our large, nationally-recognized client changed its brand due to a major acquisition. Hired to confidentially negotiate purchase of the domain. We pursued three domains. We negotiated an advantageous price and acquired the chosen domain—all in less than a month.
A client with a popular, ecologically-related name faces continual infringements. Established a program to systematically enforce the trademark nationally. We enforced the trademarks in California, Maryland, Michigan, Georgia, Colorado, and an expanding list of infringers, including a governmental entity.
Negotiated and drafted terms for a Master Services Agreement containing software licensing and extensive Statement of Work deliverables
Drafted Work Made for Hire Agreement
Created trademark strategy for national business to protect trademarks
Drafted complex Background Technology Agreement to acquire international coding services for cutting-edge internet SaaS application
Advised client on Software Source Code Escrow Agreement. Limited escrow triggering events so that source code would only be released under limited circumstances as opposed to any breach of the for License Agreement
Drafted IP Assignment Agreement to transfer IP
Presented alternatives to client for new inventions using copyright and patent structures; negotiate profits split deal with IP owner
Monitor client trademarks. Discover, prevent and enforce infringements
Expand client trademark rights by adding new U.S. trademark registration rights in new classes
Developed extensive Trade Secret Program for client to prevent the employee and competitor misuse of trade secrets
Defended client against lawsuit alleging misappropriation by client’s new employee of trade secrets and customer relationships with the new employee's ex-employer
Negotiated Trademark Sale Agreement after successfully argued opponent had abandoned their previously registered U.S. trademark
Obtained federal court Permanent Injunction and Settlement Agreement against trademark infringer, including damages, in 57 days- very fast. Obtained control of many infringing domain names, URLs
Defended client in Opposition proceeding under unique Opposer claim of "family of marks"; obtained Settlement Agreement which eventually allowed issuance of a trademark registration to our client
Help many start-up owners properly divide IP with prior employer or partner so that they avoid IP conflicts when new business begins
Defended alleged counterfeit goods supplier of Chinese goods. Formulated acceptable settlement
Regularly file federal trademark applications with United States Trademark Office and successfully resolve objections in the favor of my client such as objections due to a likelihood of confusion or a descriptiveness of the trademark
Interpreted Exclusivity Agreement in order to prevent the failed business’ partner from pursuing illegal business relationships
Researched recording of trademark with US Customs and Border Protection to prevent importation of counterfeit goods
Negotiated Trade Secret Agreement well after the services were provided when the customer realized that the Technology Developer's Agreement did not properly assign intellectual property rights to our client the licensee
Drafted Customer Terms and Conditions to acquire SaaS services from my client
Retained to analyze the IP terms in an Asset Sale Agreement; recommend numerous, important changes to the Sale Agreement
Negotiated and drafted Trademark License Agreement to license a trademark for the sale of a division of a business
Developed form Intellectual Property Property Agreements
Analyzed global foreign trademark portfolio in order to determine the best method of managing the portfolio – whether in-house or outside; present recommendations to save money
Filed UDRP (Uniform Dispute Resolution Procedure) with WIPO (World Intellectual Property Organization, Switzerland); Successfully obtain the ownership of a key .com domain name for client where Chinese company was cyber-squatting our domain
Defended local restaurant against national chain which alleged trademark infringement
Enforce and defend numerous trademark cease and desist actions nationwide on behalf of clients
Draft website Terms and Conditions including a Privacy Policy
Draft and file copyright registrations with the United States Copyright Office
Defend copyright infringement actions successfully. Research infringement, claims and damages
Negotiate and draft for national business a Trademark License Agreement for United States partners and licensees under worldwide brand
Successfully enforce worldwide trade dress of products against thirty foreign competitors in the sporting goods industry
Negotiate and draft Technology Use Agreement between inventor and client
Help entrepreneur assess which celebrity and trademark Endorsements are necessary for a multimedia sporting venue
Commonly provide trademark clearance opinions before clients use trademarks
Helped business owner provide Development Services and Marketing Agreement with customer
Drafted and interpreted numerous non-compete, customer non-solicitation and competitive restrictions Agreements for businesses
Investigate trademark use of predecessor company stretching back twenty years; determined client’s rights to enforce the trademark based on the client’s marketplace use, number of customers and sales; use Internet Archive (the Way Back Machine)
Assessed trademark and domain rights in connection with the acquisition of a business
Commonly help new business owners value IP contributions to new enterprise and recommend appropriate business ownership %’s
Assess state trademark rights in comparison to federal trademark rights using appropriate factors including significance of marketplace presence and geographic use
File U.S. trademark registrations on regular basis and maintain throughout their life
Broaden trademark protection by seeking additional registrations for goods and services not previously protected for 100-year old brand
Use proof of acquired distinctiveness for decades of prior use to overcome descriptivity objections by U.S. Trademark Office
Enforce trademark against goods similar to trademark registrant's goods; result was to increase sales and remove marketplace confusion
Draft Publishers Agreement in securities industry allowing re – use of published securities analysis
Analyze Patent Agent Agreement on behalf of clients to determine that the basket of services provided were not appropriate
Analyze Inventor’s Assistance Agreement and recover confidential information from the service provider upon an assessment that the service provider provided substandard services
Drafted and negotiated Technology Developers Agreement
Commonly help start-up businesses form the business properly, make necessary introductions and divide previously-created IP
Provide Domain Watch Services in order that client can quickly assess whether to halt infringing domain use
Register client trademark with the Trademark Clearinghouse; assess what rights are useful in connection with this registration
Provide Trademark Watch Services so that clients can be informed as soon as possible when another party begins to infringe my client's trademark
Created Patent sub-License Agreement for regional light rail system
Forced one of nation's largest energy generators to abandon their infringing trademark use in less than sixty days; filed new trademark registrations to enhance our hand; conducted research to discover opponent was using our trademark
Successfully defended trademark defendant against alleged trademark misuse; promptly agree to settlement. Settlement did not disrupt client’s business
Created Agreement for ownership of formulas in pet food business
Advise clients how to create strong trademarks which increase in value over time
Defended client in the federal trademark lawsuit; achieved good settlement
Filed state trademark applications where federal registration might not have been available or state protection was supplemental
Interpret Trademark Settlement Agreement in a federal lawsuit after allegations that the trademark defendant had violated a previous Settlement Agreement; negotiate revised settlement position successfully and within budget
Draft Trademark License Agreement between parent and subsidiary to follow rule that all trademarks need to be properly controlled
Analyze potential infringement by Chinese partner of exclusive patent rights in a Midwest transportation company; provide alternatives and future options to client
Review trademark portfolio of food company to analyze what actions could be taken to enforce their trademarks in the competitive grocery business sector
Negotiate dispute between two business partners as to trademark and invention ownership
Develop effective trademark policing programs to avoid abandonment and loss of use of rights
Draft Trademark Use Guide which helps clients avoid abandonment of trademarks through improper use
Created and executed overall mission to identify trademark assets, rationalize a trademark portfolio by weeding out unnecessary trademarks, improve trademark portfolio maintenance methods, strengthen trademarks, protect trademarks, and align trademarks with the business so that trademark assets create business value
Negotiated and drafted advantageous terms for the sale of a retiring business owner; successfully closed the transaction
Negotiated and drafted advantageous terms for the purchase of two professional staffing firms; successfully closed the transaction
Negotiated and drafted advantageous terms of the buyout of a 50% partner; closed the purchase of the stock