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Intellectual Property

Primary Practice Contact Wendi E. Sloane

Barack Ferrazzano’s Intellectual Property Group has extensive experience in the protection, management and enforcement of our clients’ intellectual property assets.  Our IP group understands the value of trademarks, copyrights, design patents and trade secrets, and how best to select, use and protect these valuable assets.  We have extensive experience in all facets of IP practice, including counseling, licensing, prosecution, business transactions involving intellectual property, registration, enforcement and litigation.  We represent clients in a broad range of industries, including fashion, cosmetics, motor vehicle, manufacturing, technology, health care, food and beverage, real estate, and financial services.

Trademarks & Trade Dress

We understand that our clients’ trademarks, logos and trade dress are the cornerstone of their brands.  We have extensive experience in all aspects relating to the development and protection of our clients’ trademarks and trade dress, and we count among our clients some of the world’s most well-known brands.  Our trademark practice includes:

  • Trademark Clearance.  We conduct trademark clearance on a thorough and cost-effective basis for trademarks and trade dress, both domestically and worldwide. 
  • Prosecution and Maintenance.  We regularly handle the registration and maintenance of large worldwide trademark portfolios, as well as opposition and cancellation proceedings.  We have a network of skilled foreign associates with whom we have worked extensively.
  • Counseling.  We counsel our clients on how to strengthen the protection of their trademarks, on proper trademark usage, and on the most cost-effective way to build their brands.
  • Policing.  We routinely advise clients on the importance of policing their marks to prevent third-party use, and handle those activities in a cost-sensitive manner, including the implementation of watch services and counseling regarding potentially infringing marks. We also consider the impact of social media when advising clients on how to protect their brands.
  • Complex Transactions.  We handle corporate transactions for famous brands, both domestically and internationally, in the context of acquisitions and sales.  Not only are the attorneys in our group skilled at structuring transactions to enhance the protection of all aspects of IP rights, our strong litigation background enables us to identify and provide advice to minimize transactional risks. 
  • Licensing.  We negotiate and draft a wide variety of trademark licenses.  We also routinely handle assignments, security interests, and other agreements relating to trademark rights.
  • Litigation.  Our attorneys have nationwide experience in all aspects of trademark and trade dress litigation, including infringement, counterfeiting, false advertising, false endorsement and dilution.
  • ADR.  We are highly experienced in using alternative dispute resolutions to achieve solutions to legal problems without litigation.

Right of Publicity

Our practice group is experienced in evaluating and litigating right of publicity claims and negotiating endorsement agreements.

Copyright

Our IP practice group has a strong background in counseling and in protecting our clients’ copyrights, including:

  • Copyright prosecution;
  • Counseling clients on how to develop and protect their ownership of their copyrighted works;
  • Counseling clients to minimize the risk of  infringement claims;
  • Drafting license and assignment agreements; 
  • Advising clients in complex transactions; and
  • Litigating copyright infringement lawsuits.

Trade Secrets

We have extensive experience in the protection of our clients’ trade secrets and sensitive business information.  We counsel our clients on how to protect their valuable trade secrets by developing trade secret protection programs. We draft, negotiate, and enforce confidentiality and non-compete agreements, and we litigate trade secret and non-compete disputes across the country.

Design Patents

Our IP practice includes Design Patent counseling, prosecution, and litigation.

Software

Our intellectual property attorneys counsel entities and individuals engaged in the development, distribution, licensing and other commercialization of software.  Our work in this area includes:

  • Drafting and negotiating software development agreements, distribution agreements, reseller agreements, and traditional and custom licensing agreements;
  • Assisting our clients with the preparation of enforceable invention assignment and confidentiality agreements for use with employees and independent contractors;
  • Counseling clients on how to protect the proprietary elements of developed and licensed software, including source code, documentation, websites, content, trademarks, copyrights, trade secrets, algorithms and enhancements;
  • Identifying and addressing software-specific issues in mergers and acquisitions, including addressing ownership issues, transition matters, and “open source” licensing concerns; and
  • Developing software development policies designed to prevent unauthorized use of “open source” software.

Internet

We recognize that the legal issues relating to the Internet – including domain name protection, e-commerce, and the hidden use of trademarks such as in metatags and key words – constitute a dynamic and increasingly important area of the law.  Our IP group is well-versed on these issues, and our practice includes:

  • Internet domain name acquisition and registration;
  • Negotiating agreements and policies relating to Internet and cloud issues, including website terms of use, privacy policies and disclosures;
  • Social media counseling;
  • Internet domain name infringement and cybersquatting disputes;
  • Metatag and key word disputes; and
  • copyright infringement and trade dress claims regarding website copying.

Our Team

Having practiced extensively in large firm and boutique environments, our intellectual property attorneys bring years of experience and a creative approach to their work.  Our intellectual property group includes attorneys with experience in complex contract negotiation, strategic transactions, ongoing business counseling, litigation and dispute resolution.  As a result, we maintain an impressive record of crafting favorable outcomes to a wide array of challenges in both transactional and litigation scenarios. Some of our attorneys focus on IP counseling, licensing, business transition and portfolio management matters, while others focus on IP litigation. Our practice is supported by a highly skilled paralegal and a state-of-the-art intellectual property asset management database system.

Representative Clients

  • Body Central Stores, Inc.
  • Fendi Adele S.r.l.
  • Fresh, Inc.
  • Louis Vuitton Malletier S.A.
  • Moët Hennessy USA, Inc.
  • Parfums Christian Dior

Representative Matters

  • Intellectual Property Acquisition & Counseling: Luxury Goods

    Represented various divisions of LVMH Moët Hennessy Louis Vuitton, S.A. in the intellectual property aspects of their acquisitions of Bliss, Fresh, Benefit, Urban Decay, Hard Candy, Donna Karan, Belvedere Vodka, including overseeing the intellectual property-related due diligence activity and negotiating the intellectual property-related provisions of the transaction documents.

  • Intellectual Property Acquisition and Counseling: Alcoholic Beverages

    Represented a division of LVMH in the intellectual property aspects of its acquisition of Millennium Imports, LLC, which held the worldwide rights to Belvedere and Chopin brand vodkas, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.

  • Trade Dress Infringement

    Represented GIBC, Inc., a well-known micro-brewery (Goose Island Beer), in a trademark infringement action, successfully enjoining a competitor’s use of a beer tap handle that infringed upon GIBC’s trademarked “Goose Head” beer tap handle.

  • Trademark Infringement: Appellate

    Represented Louis Vuitton Malletier, a division of LVMH, in successful appeal to U.S. Court of Appeals for the Second Circuit, obtaining a reversal of the district court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action.

  • Trademark Infringement: Counterfeiting

    Represented Fendi in a trademark infringement action against a major discount retailer, arising out of the defendant retailer’s sale of allegedly counterfeit Fendi handbags, wallets, and other accessories in its warehouse stores ; the lawsuit was settled on favorable, but confidential, terms.

  • Trademark Infringement: Luxury Goods

    • Represented Louis Vuitton Malletier in a trademark infringement action, obtaining a consent injunction against the infringing party, as the infringer’s agreement to pay the legal fees Louis Vuitton incurred in the action.
    • Defending Moët Hennessy in a trademark infringement action, obtaining a favorable settlement.
    • Defending De Beers Diamond Jewellers Ltd. in a trademark infringement action, obtaining a favorable settlement.
    • Represented GoSmile, Inc in a trademark infringement and trade dress action against against a major retailer, obtaining a favorable settlement.
    • Represented Walmart Stores Inc. in the appeal of a decision by the PTO’s Trademark and Appeal Board regarding an attempt to cancel one of Walmart’s trademark registrations and Walmart’s opposition to the applications to register allegedly conflicting trademarks, obtaining a favorable result.

View All
  • AA Capital Inc. v. Orecchio (N.D. Ill.)

    Represented the receiver of a failed investment advisor in all litigation to recover assets and insurance proceeds; we recovered significant assets, including the proceeds of directors and officers liability policies and the advisor’s fidelity bond.

  • Cintas Corp. v. America West Airlines, Inc. (N.D. Ill.)

    Defended America West Airlines in a case alleging misappropriation of trade secrets; we settled the lawsuit on favorable, but confidential, terms.

  • DeBoulle Diamond & Jewelry Inc. v. De Beers Diamond Jewellers, Ltd. (N.D. Tex.)

    Defending De Beers Diamond Jewellers Ltd. in a trademark infringement action; we settled the lawsuit on favorable, but confidential, terms.

  • Fendi Adele S.r.l. v. Walmart Stores, Inc. (S.D.N.Y.)

    Represented in a trademark infringement and counterfeiting action, arising out of the defendant retailer’s sale of allegedly counterfeit Fendi handbags, wallets, and other accessories in its warehouse stores; we settled the lawsuit on favorable, but confidential, terms.

  • GoSmile, Inc. v. CVS Caremark Corporation (S.D. Cal.)

    Represented GoSmile, Inc in a trademark and trade dress infringement action; we settled the lawsuit on favorable, but confidential, terms.

  • Hertzberg Ernst & Sons v. Louis Vuitton Malletier S.A. (N.D. Ill.)

    Represented Louis Vuitton in a trademark infringement action; we obtained not only a consent injunction but also the defendant’s agreement to pay the legal fees our client incurred by our client in the action.

  • In re Kmart Corporation: Global Property Services, Inc. v. Kmart Corporation, (Bankr. N.D. Ill.)

    Defended Kmart on a breach of contract claim seeking approximately $20 million; we obtained dismissal of the claimant’s damage claim in full, resulting in a favorable resolution of the case.

  • Loufrani v. Walmart Stores, Inc. (N.D. Ill.)

    Represented Walmart in the appeal of a decision by the PTO’s Trial Trademark and Appeal Board refusing to cancel Walmart’s trademark and sustaining the opposition to the registration of two allegedly conflicting marks; we resolved the appeal on favorable, but confidential, terms.

  • Louis Vuitton Malletier S.A. v. Dooney & Burke, Inc. (2nd Cir.)

    Represented Louis Vuitton Malletier in successful appeal to U.S. Court of Appeals for the Second Circuit; we obtained a reversal of the District Court’s denial of Louis Vuitton Malletier’s motion for preliminary injunction in a trademark infringement action.

  • Louis Vuitton Malletier S.A. v. Hyundai Motor Co. (S.D.N.Y.)

    Represented Louis Vuitton in a trademark infringement and dilution action; we obtained summary judgment in Louis Vuitton’s favor on its federal dilution claim.

  • Smith as Plan Trustee for and on behalf of the Estates of Boston Chicken v. Arthur Andersen LLP; Beck v. Bank of America (D. Ariz.)

    Represented Bank of America in third-party actions seeking recovery of more than $1 billion in damages allegedly arising out of national restaurant chain's insolvency; we were successful in obtaining summary judgment dismissing the third party complaints.

  • Zodiac Spirits, Inc. v. Moet Hennessy U.S.A. (E.D. Michigan)

    Defending Moët Hennessy in a trademark infringement action; we settled the lawsuit on favorable, but confidential, terms.

  • Copyright Infringement: Literary Works

    Represented an author in successfully resolving a copyright infringement claim, without the need for litigation.

  • Copyright Infringement: Textiles

    Represented a quilt manufacturer in successfully defending a copyright infringement claim concerning the fabric patterns used for quilts, without the need for litigation.

  • Dilution

    Represented Louis Viutton in a trademark dilution action against Hyundai Motors America, obtaining summary judgment in our client's favor on its dilution claim.

  • Entrepreneur Trademark Dispute

    Scott represented a local entrepreneur in a heated trademark dispute that had raged for nearly a decade before his involvement. Scott suggested and conducted court-aided mediation in an effort to finally resolve the matter. The court found in favor of Scott's client, awarding damages and injunctive relief, rejecting the defendant's trademark application and transferring its domain name to Scott's client.

  • Intellectual Property Acquisition and Counseling: Travel Agency Services

    Represented Accor S.A. in the intellectual property aspects of its sale of an interest in Carlson Wagonlit Travel, including overseeing all due diligence activity, and negotiating all intellectual property provisions of the transaction documents.

  • Intellectual Property Audits

    Scott has conducted intellectual property audits for more than 25 corporate clients. In the process, he has created social networking policies, web site terms and conditions, and bring-your-own-device policies; conducted on-site inspections leading to the discovery of a number of trade secrets and copyrights; and drafted restrictive covenants and non-disclosure agreements. Scott's tireless attention to detail during these audits has uncovered and protected millions of dollars in corporate assets.

  • Trademark Infringement

    Represented GoSmile, Inc., in a trademark infringement action filed against CVS, alleging that CVS's USMILE product infringed GoSmile's trademark rights. This case was successfully settled on terms that are confidential.

  • Trademark Prosecution, Policing and Licensing: Cosmetics

    Ongoing representation of several cosmetic companies in connection with the prosecution, maintenance, and licensing of their worldwide trademark portfolios, which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.

  • Trademark Prosecution, Policing and Licensing: Wine & Spirits

    Ongoing representation of a prominent wine and spirits manufacturer and distributor in connection with the prosecution, maintenance, and licensing of its worldwide trademark portfolio, which work has involved preparing cease-and-desist letters to infringing entities and initiating litigation to the extent necessary to protect the client’s intellectual property rights.

  • Trademark Registration

    In a coordinated effort with over 70 foreign associates, Scott cleared and applied to register a multi-national corporate client's new trademark in over 75 countries on the same day. Scott devised the difficult international filing strategy to stave off potential infringers from around the world.