Intellectual Property

Trademark, Copyright & Domain Name Protection

Protecting your trademarks, copyrights, domain names, and other brand identity assets requires counsel with the experience and practice depth to get the job done. We are one of the few firms that can handle all the work required to secure and protect these assets worldwide. 

Our practitioners manage extensive trademark portfolios and assist clients with trademark clearance, prosecution, registration, and licensing, as well as provide counsel and strategy on trademark, copyright, e-commerce, domain name piracy, false advertising, and unfair competition issues. When it comes to enforcement and defense of your IP rights, we have an experienced team of trademark litigators who will carefully consider the best timing and forum for litigation and explore mediation or arbitration options. We will work with you to develop appropriate branding strategies and a comprehensive corporate IP policy to maximize the value of your IP assets.

Quick Facts


  • Multidisciplinary team of attorneys and professionals experienced in the clearance, prosecution, protection, and licensing and enforcement of trademarks
  • Attorneys who served as examiners at the US Patent and Trademark Office (USPTO)
  • Attorneys active and in leadership positions in the International Trademark Association and other professional IP organizations
  • Represent clients before the following:
    • USPTO
    • US Trademark Trial and Appeal Board
    • World Intellectual Property Organization
    • National Arbitration Forum
    • US Customs

  • Network of international associates in 120+ countries
  • Frequent speakers and regularly publish articles on topics of interest regarding trademark, copyright, and domain names
  • Frequently sought as IP commentators by regional and national media outlets
  • Recognized regionally, nationally, and internationally as leaders in the IP field

Areas of Focus

  • Trademark
    • Challenges to brand protection posed by social media sites
    • Brand development and protection strategies
    • Applications, prosecution, and registration maintenance
    • Portfolio audits
    • Due diligence
    • Licensing
    • Watching services
    • US Customs recordations

  • Copyright
    • Counseling
    • Due diligence
    • Portfolio audit and evaluation
    • Licensing
    • Registration
    • DMCA complaints

  • Domain name protection
    • Assignment, merger, name change, and security interest recordation services
    • Civil actions under Anti-Cybersquatting Piracy Act (ACPA)
    • Domain name registration and dispute resolution
    • Keyword and sponsored link advertising on search engines
    • Negotiation of domain name transfer agreements and releases
    • Registration of domain names, including advice regarding defensive registration
    • Selection, procurement, protection, recovery, and enforcement of domain names
    • TLD strategies
    • Uniform Domain Name Dispute Resolution Policy (UDRP) complaints

       

     

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REPRESENTATIVE LITIGATION

  • Bumble & Bumble, LLC v. Pro's Choice Beauty Care, Inc., et al., 1:14-cv-06911 (S.D.N.Y.) – Represented both a wholesaler and a national chain retailer as defendants accused of selling counterfeit hair care products. A favorable settlement was reached after only one deposition occurred, and client’s suppliers (who were brought into the suit via our third party complaint) contributed to the settlement.
  • Farouk Systems, Inc. v. Target Corporation, et al., 4:06cv01103 (S.D. Texas) – Represented a retailer and its supplier as defendants in a Lanham Act repackaging case that made new law. The case was won on summary judgment, and was upheld through appeal.
  • Accentra, Inc. and WorkTools, Inc. v. Staples, Inc., 2:07-CV-5862 (C.D.CA) (Fed. Cir. 1237, -1264) – Represented a major retailer in a patent and trademark infringement suit at trial and on appeal to the Federal Circuit. Won a summary judgment on trademark infringement and unfair competition claims and obtained affirmance on appeal.
  • Klein Electronics, Inc. V. Boxwave Corporation, 3:10cv2197  (S.D.Cal.) – Defended Boxwave against multiple claims, including trademark dilution, infringement, and misappropriation. We  favorably settled the case before discovery based upon our client's intention to wind down the product line that was of concern for Klein Electronics.
  • Moroccanoil, Inc. v. Harmon Stores, Inc., et al., 2:10cv06016 (D.N.J) – The case was settled early, on terms favorable to our client, and we were successful in having the client’s suppliers of alleged counterfeit products contribute a significant portion of the settlement.
  • Innovation Ventures, LLC, et al. v. Ultimate One Distributing Corp., 1:12cv05354 (E.D.N.Y.) – Represented a wholesaler who was one of approximately 75 defendants accused of selling counterfeit 5-Hour Energy drinks. The case was settled favorably for our client prior to summary judgment. Some of the client’s suppliers contributed to the settlement as a result of cross-claims asserted against them. Motions for summary judgment remain outstanding as to others.
  • Angles Beauty Care v. Hair Art Inc., et al., 3:05cv166 (S.D.Cal.) – After filing trademark infringement claims against Hair Art and other defendants, our client was subject to significant counter claims of infringement. At trial, the opposing party chose not to put on its case after we presented our case to the jury, electing instead to settle the case on terms favorable to our client.
  • Perfumania Holdings, Inc. v. Ralf's Perfumes, Inc., et al., 1:15cv06800 (S.D.N.Y.) – Represented a national retailer in filing suit against a retail competitor for using infringing signage in a competing store. Despite ignoring multiple lawyer letters prior to filing suit, almost immediately after the lawsuit was served, the defendant capitulated to all of our client’s demands.
  • CrossFit v. Maximum Human Potential, 3:12-cv-02348 (S.D.Cal.) – Filed suit against Maximum High Performance (MHP) for infringing a core CrossFit trademark. The case settled prior to substantial discovery, and in our client's favor, after we were successfully granted a preliminary Injunction.
  • Lights Out Holdings v. Nike Corporation, 3:14cv00872  (S.D.Cal.) – Represented Shawne Merriman and his company Lights Out Holdings against Nike for trademark infringement and claims of false endorsement. The case settled on terms favorable to our client after closure of fact and expert discovery and while summary judgment motions were pending.
  • Paris Hilton & Parlux Fragrances, LLC v. International Perfume Palace, Inc., et al., 2:12cv05074 (E.D.N.Y.) – Plaintiff clients are licensor and licensee of famous Paris Hilton men’s and women’s fragrances, and sued various sellers of infringing “Paris Paris” fragrance. Clients achieved settlements and/or judgments against several defendants very early on in the case without costly discovery, and the offending products were removed from the marketplace.
  • Yves Saint Laurent Parfums, S.A., et al. v. Costco Wholesale Corporation, et al., 1:07cv03214 (S.D.N.Y.) – Our client, a wholesaler of fragrances and perfumes, was sued by THE manufacturer and Costco based on allegations that Opium perfume supplied by our client to Costco was counterfeit. In connection with the defense of this case, we commenced a third party suit against the client’s immediate supplier for indemnification, alleging claims under the Lanham Act, contract (based on a vendor agreement), and implied warranty under the UCC. The case was successfully settled prior to depositions with our client’s supplier paying a significant portion of the settlement proceeds.

Clients We Serve

  • Automotive industry companies
  • Certification programs
  • Commercial and industrial products and services companies
  • Computer products and services companies
  • Cosmetics and personal care products and services  companies
  • Educational institutions and companies
  • Energy and clean technology companies
  • Fashion and footwear companies
  • Financial, banking, and investment services companies
  • Health care companies
  • Insurance companies
  • Internet and e-commerce companies
  • Life sciences companies
  • Manufacturers
  • Nonprofits
  • Pharmaceutical industry companies
  • Professional organizations and trade associations
  • Professional services companies
  • Publishing companies
  • Restaurant and food industry companies
  • Retail and consumer products and services companies
  • Action sports professionals
  • Sports, arts, and entertainment companies
  • Technology, communications, and media companies