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Your intellectual property is a crucial asset for your business. Whether it is your branding, your content, your ideas or your trade secrets, your intellectual property needs proper handling and protection. We have many years of experience with building and protecting trademarks, registering copyrights and handling contracts, litigation and other intellectual property matters, and forming corporations and limited liability companies. This website will introduce you to our services and acquaint you with our approach.

Trademark registration and maintenance is only one area in which we have significant experience. We also appear on behalf of our clients before the United States Patent and Trademark Office's Trademark Trial and Appeal Board (otherwise known as the "TTAB"), in responding to refusals to register and in defending and prosecuting trademark opposition and cancellation actions. We prosecute and defend trademarks and copyrights in federal courts and assist our clients by drafting a wide range of agreements, including non-disclosure non-use agreements, co-existence agreements, rights of first refusal and matching offer, and licensing agreements. In addition, we assist clients in strategizing for branding, brand building and brand protection across the spectrum, including through use of our automated trademark portfolio management system. We have appeared in federal courts in Vermont, New York, California, Florida and Washington, D.C., and have extensive experience with Paris Convention filings, International Trademarks, Madrid Protocol, WIPO matters, domain disputes, domain name sales and purchases, and Internet issues and disputes.

We serve a wide range of clients, many of them in software and emerging technologies, but also in electronics, fashion, clothing and accessories, food, pharmaceuticals and nutriceuticals, exercise modalities, boxing and mixed martial arts, music and fine art.

We also partner frequently with other law firms, particularly foreign practices who need assistance registering and maintaining their intellectual property in the United States.

Intellectual Property Practice Areas

Trademark

We can file your trademarks both domestically and internationally. We have filed and prosecuted (that means brought to registration) many thousands of trademarks throughout the world. This section explains what you will need to provide us with in order to file your trademark and some of the basics of trademark registration.

Copyright

The Internet has made copyright a "hot button" issue, rife with misunderstanding. This section explains why you need to register your copyrights (even if the law doesn't require it), and will introduce you to some of the issues surrounding copyright infringement and defenses such as "fair use."

Internet Law & Domain Name Issues

We have successfully litigated to protect our clients' Internet domain names, used trademark for cyberpiracy prevention, issued and responded to so-called DMCA takedown notices, participated in ICANN arbitration proceedings, and dealt with cybersquatting. On many occasions, we have helped our clients negotiate the sale and transfer of domain names, sometimes for considerable sums of money. In this section, we will introduce you to some of the basic concepts and procedures of protection in this area.

Licensing & Contracts

Written agreements are essential to protecting your intellectual property, whether trademarks, copyrighted content, potential inventions or trade secrets. This section discusses the kinds of contracts we prepare for our clients, from LLC operating agreements to non-disclosure and confidentiality issues to work for hire agreements and trademark and content licenses. We have served some of our clients from early start-up through acquisition or public offering, and we know how important it is to protect your intellectual property in writing at every stage.

IP Issues in Employment Law

"Non-competition" agreements have become more common over the last ten years even while courts give them mixed reviews. In addition, the presence of the Internet in the workplace has created new problems for employers in terms of protecting both their intellectual property and public image. This is a rapidly evolving area that needs to be addressed in employee handbooks and policies, as well as in employment contracts, even ones that are "at will." This section provides an introduction to these issues from the standpoint of both employers and employees.

IP Law News Roundup

Play Doh
Toy giant Hasbro is trying to trademark the smell of Play-Doh
How much is a smell worth? A lot, it seems, to multinational toy company Hasbro. Last month, the group submitted an application to trademark the distinctive scent of Play-Doh in the US. The application to the US's Patent and Trademark Office (USPTO), covers all toy modelling compounds. It describes Play-Doh's particular smell as "a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough." A container of Play-Doh was sent to the USPTO as part of the application process. Lee Curtis, a partner and chartered trademark attorney at law firm HGF, said: "Hasbro's trade mark application shows that the use of smells in branding, and companies desire to protect them is increasing." While it is rare for smells to be successfully trademarked in the US, it is not unheard of. According to Mr Curtis, the first was a flowery scent used on yarn, registered in 1990.

Bentley Motors
Bentley Loses Trademark Battle Against Same-Named Clothing Company
A trademark opposition proceeding filed by the British luxury automaker ("Bentley Motors") in 2015 against Manchester-based Bentley clothing company ("Bentley Clothing") has come to a close, with the more famous of the two parties taking a hit. On the heels of Bentley Clothing filing to register the "Bentley" mark with the United Kingdom Intellectual Property Office ("UK IPO") in June 2015, in two classes (25, which applies to clothing and accessories, and 35, which covers "retail and wholesale services connected with the sale of vehicles and parts and accessories therefor; retail and wholesale services connected with the sale of perfumes and cosmetics, optical apparatus, glasses, sunglasses, and accessories"), Bentley Motors filed to oppose the mark. According to Bentley Motors' trademark opposition, which was filed in September 2015, the goods asserted within Bentley Clothing's trademark application were "confusingly similar" to an array of goods in which it maintained trademark rights at the time. Unpersuaded by Bentley Motors' argument that it maintains rights in the "Bentley" trademark in connection with garments, UK IPO trademark hearing officer George W. Salthouse held that the company did not produce sufficient evidence to support its asserts.

Christian Louboutin
Louboutin Loses Latest Fight to Register Red Sole Trademark in Switzerland
Christian Louboutin lost a recent quest to obtain federal trademark protection for its red soles in Switzerland. According to local Swiss media outlets, the country's highest court turned down the Paris-based footwear brand's final appeal for protection, holding that its red soles are merely aesthetic and as a result, are not worthy of trademark protection. The Federal Supreme Court in Lausanne affirmed the Federal Administrative Court's April 2016 decision, which classified the brand's famed red sole as a "decorative element," as opposed to an identifier of source — the latter of which is the purpose of trademark law. Louboutin appealed the lower court's decision, but as of last week, the Supreme Court ruled against Louboutin, as well. The court held that while Louboutin does maintain trademark protections in other countries, including the United States, China, Russia and Australia, that does not mean it is entitled to the same level of protection in Switzerland.

Cox Communications
ISP to Pay $8.4 Million for Copyright Infringement
In what's bound to be viewed a scary decision for internet service providers (ISPs), Cox Communications, a cable and internet company in Virginia, has been ordered to pay $8.4 million in legal fees to BMG Rights Management for copyright infringement. This is in addition to a $25 million penalty levied against Cox in November 2014, Media Post reports. The record company sued Cox for copyright infringement because the ISP's customers were sharing pirated content, something BMG believes Cox could have taken steps to prevent. Despite Cox's arguments that it should be shielded from such lawsuits under federal copyright law, the judge disagreed, ruling instead that Cox was liable. This was the first case in which an ISP was held liable for the pirating activities of its subscribers (although not the only one). Cox appealed, saying many of the warning notices it received from BMG on behalf of its clients weren't reliable; BMG argued in return that Cox took no action to disconnect repeat offenders found to be sharing illegally pirated content. On Tuesday, US District Judge Liam O'Grady not only reaffirmed the original verdict, he ordered that Cox pay BMG's legal fees. He stated that without such a large penalty, the cost incurred in such a legal battle might "deter other potential plaintiffs from seeking to enforce their rights."

Monsanto
Monsanto loses patent and trademark dispute in India
Agriculture company Monsanto has lost a patent and trademark dispute against Indian agribusiness Nuziveedu Seeds. On Tuesday, March 28, the High Court of Delhi ordered the US company to continue a licensing agreement that had been terminated. In 2004, a joint venture between Monsanto and agricultural business Mahyco —called Mahyco Monsanto Biotech —entered into a ten-year agreement providing Nuziveedu with 50 grams of cotton seeds. Further licensing deals followed, expiring in 2015. The dispute arose in 2015 when Monsanto sued Nuziveedu for patent and trademark infringement.It claimed that the Indian company had continued to use Monsanto's technology after the joint venture had ended the licensing deal.

BrewDog
BrewDog backs down over Lone Wolf pub trademark dispute
BrewDog, the self-described "punk" beer company, has backed down in a row over the name of a family-run pub, blaming "trigger-happy" lawyers for the legal action. The brother-and-sister team behind the Wolf pub in Birmingham were forced to drop their original plan to name the establishment the Lone Wolf, after receiving a legal warning from BrewDog, which has launched a spirit bearing the same name. But BrewDog founder James Watt announced a change of heart on Monday after the Guardian's report sparked a backlash that saw the firm, a vocal critic of large, faceless brewing firms, accused of acting like "just another multinational corporate machine".

Cher
I Got Sued, Babe: Cher On Defense In Copyright Infringement Case
A motion to dismiss has been filed by attorneys representing Cher in a copyright infringement case filed against her by celebrated graphic designer Moshik Nadav for artwork and graphics on the cover of Closer To The Truth. The 2013 dance-centric album, Cher's 25th studio release, was a critical and financial success, selling more than 500,000 units. Nadav's suit, pending in the Southern District of New York, names Cher, Warner Bros. Records, a design company and the albums' art and design director as defendants and seeks $5 million in damages. According to Nadav's complaint, two logos that appear on Cher's album infringe on the copyrights to his Paris and Paris Pro logos, which he claims were created using his typography, featuring "artistic elements, such as swashes having various thicknesses, end drops and unique lettering."

Adidas vs. Puma
Adidas Sues Puma For Confusion Between Three-Stripe And Four-Stripe Soccer Cleats
According to a recently initiated lawsuit by adidas, there is no doubt that a consumer is likely to be confused as to whether adidas is involved with products containing four stripes. The complaint, filed in the U.S. District Court District of Oregon (Portland Division) is against Puma North America, Inc. and alleges trademark infringement against adidas' competitor. Specifically, adidas states concern with Puma now offering for sale a soccer cleat that contains four consecutive stripes. Additionally, adidas cites to a mutual history with Puma — both companies were founded by brothers Adi Dassler and Rudolph Dassler and share the same small German town for their corporate headquarters. "Puma's use of four diagonal stripes on the side of the Infringing Cleat is a blatant attempt by Puma to trade on the goodwill and commercial magnetism adidas has built up in the Three-Stripe Mark and to free-ride on adidas' fame as a preeminent soccer brand," states the complaint filed by Adidas.

Steadfast Hosting
Court: Hosting A Pirate Site Doesn't Equal Copyright Infringement
A Federal Court in California ruled that Steadfast is not automatically liable for hosting an alleged pirate website. In a tentative order favoring the Chicago-based hosting provider, Judge Wu fails to see sufficient evidence to support a secondary liability claim. Last year, adult entertainment publisher ALS Scan took things up a notch by dragging several third-party intermediaries to court. The company targeted CDN provider CloudFlare, advertising network JuicyAds, and several hosting providers, including Chicago-based Steadfast. Steadfast was not happy with the allegations and has recently asked the court to dismiss the case. Among other things, the company argued that it's protected by the DMCA's safe harbor provisions. In a tentative ruling issued this week, the California District Court agrees that the allegations in the second amended complaint (SAC) are not sufficient to hold the hosting company liable.

Cannabis Plant
California Bill Provides Trademark Protection for Marijuana Industry
The federal government grants trademarks for businesses but the federal government still classifies marijuana as an illegal drug. That makes getting a trademark at the national level impossible. Therefore, California lawmakers have introduced a bill that would provide that protection. Assembly Bill 64 expands provisions of the Model State Trademark law allow the state to grant trademarks to business that deal in "medical cannabis and nonmedical cannabis goods and services." The lack of trademark protection in the marijuana industry already has led a German pipe maker to sue companies in the United States for appropriating their name and placing it on other products. Under current law, a secretary of state can provide trademark protection for businesses at the state level, but only if they already have a federal trademark. The new law would make California the third state, along with Washington and Colorado, to offer trademark protection to marijuana businesses.

IP News Roundup Archive

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