For many individuals, businesses and organizations, intellectual property rights- namely trademarks and copyrights- are one of their most important assets. Whether seeking to identify, register or protect a trademark such as company or organization’s name, a slogan or distinguishing service mark or a domain names, or seeking to identifying, register and protect a copyright to an original work of authorship such as literary works, photographs, curriculum, music, clothing designs or computer software, our intellectual property lawyers work with our clients as they create intellectual property. We also work with our clients to monetize or otherwise share their intellectual property with others through license agreements or asset purchase agreements, as well as acquire the intellectual property rights of others through similar agreements. In the event that another party infringes or otherwise improperly uses the copyrights and trademarks of our clients, we are poised to take legal action whether by sending cease and desist letters to negotiate settlements, or if the need arises file lawsuits in federal and state court.
What we do
Once our clients identify names, slogans or phrases that they wish to protect, our team of trademark lawyers work with our clients to search to see if their chosen marks are suitable for registration (e.g. determining if there are any potentially conflicting marks, determining if the United States Patent and Trademark Office (USPTO) may need the chosen marks as too generic, descriptive or otherwise not suitable for registration), prepare applications for registration and follow them through to conclusion by answering office actions from the USPTO, addressing concerns raises by third parties who may claim similar rights, etc. and after a trademark registration is completed, assist clients with maintain the registration of their marks by filing required affidavits of continued use (e.g. filing Section 8 and Section 15 affidavits). While trademarks do exist without registration (e.g. common law use of trademarks are recognized), a registration helps to strengthen the holder’s rights which, along with proper use, are afforded increased protection under federal law and judicial precedent.
When an original work is created and takes the form of a tangible medium (e.g. a story written in a book, a song recorded, a photograph taken, software created, etc.), a copyright for the original work is automatically created; however, as with trademarks, copyright registration strengthens the protection afforded to an original work. Additionally, unlike with trademarks, to enforce one’s rights to copyright, having a registered copyright is mandatory condition precedent prior to commencing a lawsuit against an infringing party.
Licensing Trademarks and Copyrights to Others
Clients often come to us for assistance in licensing the intellectual property they create to others in connection with certain business transactions, delivery of services, sale of products, etc. Our trademark attorneys help clients develop strategies for licensing their trademarks and copyrights whether for the purpose of monetizing the intellectual property they create, or sharing it with others in connection with certain charitable endeavors and then draft license agreements and other agreements to memorialize the understanding between the parties to be clear about what rights and responsibilities both the owner and user of the intellectual property rights being licensed have to each other.
Use of Trademarks and Copyrights of Others
The ease with which trademarks and copyrights of others are available online may result in the false assumption that marks can be used, website or newspaper text copied, or pictures shared without the need to obtain permission from the creator/owner of such trademark or copyright. While there are certain exceptions (e.g. fair use as defined by law or referencing/utilizing a trademark or a copyrighted work in connection with publishing a news article), the analysis is nuanced, and given the potential for damages or risk to reputation, it is best to work with lawyers to identify potential pitfalls before utilizing the intellectual property rights of others without their permission. We work with clients to help identify what steps need to be taken to “clear” the use of trademarks and copyrights of others without their permission, and when their permission is required, we work with out clients to obtain that permission through agreements and licenses.
Enforcing Your Intellectual Property Rights
When you have expended valuable resources to develop intellectual property such as trademarks and copyrights, you do not want others using your intellectual property without your permission whether or not you are seeking compensation from them. In many cases such as in connection with trademark litigation, failure to property enforce your rights to your intellectual property may weaken any case you bring against an infringing party. Additionally, failure to properly and consistently use your trademark may also affect the strength of a lawsuit you bring against an infringing party, and also expose a registered mark to the risk of being cancelled for lack of proper, consistent use. We work with our clients to protocols for consistent use of trademark and copyrights, identify potentially infringing use and we work with our clients take action to enforce their rights through cease and desist letters, demand letters and resolution through arbitration and litigation, when necessary.