Intellectual property is often a company’s most valuable asset, so protection of that asset is vital to our clients’ success. The Intellectual Property Department offers comprehensive services in all areas of intellectual property law, including patents, trademarks and trade dress, copyrights and trade secrets. We assist clients in industries as diverse as financial services, fashion, entertainment, computer software, publishing, Internet-related services and consumer products.
We identify core intellectual property rights, create cohesive protection for these crucial rights, litigate to defend these rights, and negotiate transfers and licenses. We have the scientific background and knowledge that may be necessary to resolve intellectual property issues in the areas of electronics, computer software, biotechnology, pharmaceuticals, chemistry, chemical engineering and mechanical engineering.
Our clients have had notable successes in protecting their assets through integrated patent, trademark and copyright strategies.
We have represented Marvel Characters, Inc. in a variety of patent, trademark and copyright matters relating to the comic book action heroes Incredible Hulk and Spider-Man. We provided patentability analysis for Marvel toy lines, we obtained design patent protection for “Hulk Hands” toy gloves(the shape and color of Incredible Hulk’s fists), and we obtained trademark registration of the color “bright green” for super-human action figures. What’s more, we achieved an amicable resolution in a lawsuit over use of the marks HULK HOGAN, HULKAMANIA, HULKSTER, HOLLYWOOD HOGAN AND HOLLYWOOD HULK HOGAN.
Trademark and Copyright Litigation: We pursue and defend trademark, trade dress, copyright and trade secret claims in state and federal courts and before government agencies throughout the United States, handling issues such as likelihood of confusion and reverse confusion, product configuration dilution, first sale and fair use. We police our clients’ valuable intellectual property by monitoring watch service notices, and when there is evidence that their marks and other property are being infringed, we prepare cease and desist letters. We have extensive experience in pre-trial and trial procedures of state and federal intellectual property actions, and can swiftly defend or bring temporary restraining orders, preliminary injunctions and summary judgment as well as other motions.
We obtained an order for Honeywell International Inc. enforcing settlement in litigation against Notiplex Securite Incendie, Inc., in the United States District Court for the District of Connecticut.
We filed suit on behalf of GfK US Holdings, Inc. against Affinity LLC in the United States District court for the Southern District of New York, and stopped Affinity’s use of ADNORMS and VISTA AD NORMS.
For the JRR Tolkien Estate, we stopped distribution of storybooks infringing our client’s LORD OF THE RINGS copyrights, without need of litigation.
Patents
Patent Audits: The Intellectual Property Group performs audits of our clients’ present and potential intellectual property and product portfolios to assess which technologies are patentable, as well as which products may be blocked by a competitor’s patent and which sensitive materials may be protected as trade secrets. We advise our clients on intellectual property procedures, such as intellectual property disclosure, intellectual property review and employee incentives.
Patent Prosecution: We research prior art patents relevant to our clients’ inventions and provide opinions as to the patentability of these patents. We also prepare and prosecute patent applications in all technologies before the United States Patent and Trademark Office, including appeals to its Board of Appeals and to all federal appellate courts. In addition to representing our clients in patent reexamination, reissue and interference proceedings in the United States, we coordinate the filing and prosecution of patent applications in every country in the world in conjunction with our vast network of former U.S. patent law firm associates.For one of the world’s largest brokerage firms, we undertook an industry-wide patent audit, analyzing all of the financial-business-method patents held by key competitors.
We filed patent applications for software facilitating real time on-line stock trading.
Patent Litigation: In anticipation of possible litigation both by our clients and against our clients, we analyze patents and render opinions on patent validity and potential infringement. We block goods that infringe our clients’ patents at the U.S. border, filing claims before the International Trade Commission and the U.S. Customs Service.
CL&M provided written legal opinions on the invalidity of patents owned by a Fortune 500 chemical company.
Patent Due Diligence: We have handled patent due diligence in numerous substantial transactions involving such industries as medical diagnostic and treatment devices, telecommunications technology and electronic data transfer components.
Trademarks
Trademark Audits and Portfolio Management: We audit and manage trademark portfolios aggregating thousands of marks for such clients as Playtex Products Inc., Teva Pharmaceutical Industries Ltd., and United Business Media.
Trademark Registration: We perform comprehensive clearance searches and provide registrability opinions for our clients’ trade identifiers – company names, house brands, product marks, packaging, product and packaging configurations, sounds and scents. We practice before the U.S. Patent and Trademark Office, where we file and prosecute trademark applications, including appeals, and represent our clients in trademark opposition and cancellation proceedings.
We helped United Business Media obtain federal registration for its “U” corporate logo.
In the aftermath of September 11, 2001, we helped a client that had lost its offices in the Twin Towers move forward by finding and protecting a new corporate name.
Trademark Licensing: We transfer and license trademarks for both licensors and licensees in a number of technological and consumer product fields.
CL&M negotiated a master software license and services agreement with a large European pharmaceuticals company for software that permits on-line data entry and management of clinical trials of new drugs.
We drafted a license permitting financial services customers on-line access to trading data for transfers of financial derivative instruments.
Copyrights
Copyright Registration: We identify and register copyrighted works for clients in a wide variety of areas – computer software, written and other artistic works, character rights, still photography, television, recordings, fashion, financial services, consumer products and web site design.
Our client Stephen Webster prevailed in an appeal in the United States Copyright Office, obtaining copyright registration for its signature CRYSTAL HAZE jewelry line.
Copyright Licensing: We have extensive experience in copyright licenses, as well as experience in software licensing in such diverse technologies as financial analytic software for transactions transmitted over the Internet, word processing software for the visually impaired, sports-related software and telecommunications technology for a government telephone system. We handle licensing negotiations ranging from tens of thousands to tens of millions of dollars.
As longtime counsel to the Estate of John O’Hara, we negotiated an agreement granting a major movie producer an option to make a film based on O’Hara’s Appointment in Samarra.
Copyright Counseling and Audits: In light of rapidly changing copyright law, CL&M assesses risks, including Internet-related risks, and reviews our clients’ product lines, marketing materials and web sites to ensure that they properly protect, use and mark copyrights.
We advised a media client on the risks of a deal involving electronic publishing of existing collective works while an important ruling was pending in the Supreme Court.
Domain Names
Domain Name Registration: We clear and obtain domain name registrations and integrate their protection with the protection of our clients’ trademarks.
When a third party owned a domain name that was identical to our client’s house trademark, we helped the client to purchase the domain name inexpensively.
Domain Name Litigation: As an integral part of our clients’ trade identity strategies, we file and defend Uniform Dispute Resolution Proceedings (UDRPs) to determine domain name ownership, as well as federal anticybersquatting and other e-commerce-related actions. We have successfully shut down infringing web sites.
For our travel client Cosmos European Travels AG, we brought a successful UDRP proceeding over the domain name “cosmos.com” and prevailed on summary judgment in federal court when the domain name holder contested the ruling in the UDRP.
Representative Clients
Among our clients are The Andy Warhol Foundation for the Visual Arts, Honeywell International Inc., the International Recording Media Association, Inc., Marvel Characters, Inc., Playtex Products, Inc., Sixty SpA, Sun Pharmaceuticals Corp., Teva Pharmaceutical Industries Ltd., Tullett & Tokyo Liberty plc., and United Business Media.
Professional Activities
We are actively involved in the International Trademark Association, the American Intellectual Property Law Association, the Copyright Society of the U.S.A. and the Licensing Executives Society.