BFKN’s IP Group has a wealth of experience in all facets of IP practice, including counseling, licensing, prosecution, business transactions involving intellectual property, registration, enforcement, and litigation. Our attorneys 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.
Many of the attorneys in our IP Group practiced extensively in large firm and boutique environments prior to joining BFKN. Our clients benefit from our attorneys’ years of experience focused on IP and a creative approach to their work. 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 highly skilled paralegals and a state-of-the-art intellectual property asset management database system.
Practice Contacts
- Partner312.629.7364
- Partner312.984.3166
How We Can Help
Our clients’ trademarks are more than source-identifiers. They are unique brands that represent their goodwill and symbolize a promise of quality. Our trademark prowess includes not only traditional marks such as word marks and logos, but also nontraditional marks such as trade dress, color marks, and sound marks.
We manage global trademark portfolios for many of the worlds’ most famous brands. Our trademark attorneys provide strategic and business-focused advice to our clients. We are able to leverage longstanding relationships with the top trademark firms throughout the world to provide top-quality and cost-effective portfolio management services.
Our attorneys have litigated trademark and unfair competition cases in federal courts throughout the U.S. We stand ready to aggressively enforce our clients’ marks and to challenge competitors’ false claims. Conversely, when our clients face trademark infringement or false advertising claims, we stand ready to proactively defend their campaigns. We have represented our clients in urgent adversarial matters, such as temporary restraining orders and preliminary injunctions. We have also litigated cases through trial and appeals.
We have extensive experience in evaluating the risks associated with advertising claims and campaigns to minimize the risk potential of litigation and regulatory enforcement actions. We are well versed in the FDA and FTC rules and regulations that apply to beauty products, including cosmetics, sunscreen, and over the counter supplements to provide guidance on regulatory compliance.
We review our clients’ advertising claims from both a competitor and consumer perspective. Our Lanham Act focus allows us to consider and avoid competitor false advertising claims. Our experience with consumer protection laws at the state level allows us to successfully navigate potential consumer claims, including class actions. Should claims arise, our seasoned litigators are adept at handling a wide array of false advertising claims.
Our clients’ creative works are a top priority. We represent multiple clients in copyright matters involving visual arts and literary works. Our attorneys are highly skilled in U.S. Copyright Office practice and procedure. In addition, we litigate cases involving infringement allegations.
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.
When necessary, we will assert or defend our clients’ rights under the Defend Trade Secrets Act and related state laws.
For forward-thinking companies, design patents are an invaluable tool to protecting their IP. With remedies for design patent infringement often exceeding those available for utility patents, protecting design features against piracy or infringing use is a critical investment.
With the passage of the Leahy-Smith America Invents Act, the U.S. implementation of The Hague Agreement Concerning the International Registration of Industrial Designs, and other patent-related developments worldwide, a global design patent strategy is now more essential than ever. As client advocates, we provide coordinated representation in design patent prosecution matters. We also manage an extensive network of attorneys outside the U.S. with whom we work with regularly on design patent matters, enabling us to resolve problems and pursue opportunities almost everywhere our clients do business or face competition.
Technological advances create significant opportunities for businesses, but also present significant risks. With enterprise risk management at the forefront of an ever-advancing regulatory agenda, a company must develop safeguards to protect its operations, employees, customers, and other stakeholders. Accordingly, we advise our clients on the full spectrum of legal, regulatory, reputational, and other issues arising from the manner in which they utilize, and are otherwise affected by, data collection, transactional websites, mobile applications, social media, cloud computing, and other recent innovations. Given the sensitive nature of the information customers, employees, and other stakeholders entrust to the companies with which they do business, every business should develop a plan to address any potential or actual breach of its systems and to otherwise protect sensitive information in its possession.
- Walker Wear LLC v. Off-White LLCRepresented Off-White in obtaining dismissal of federal trademark dilution claim on grounds that the asserted marks were not famous marks for purposes of the Lanham Act. Obtained dismissal of NY state law claim on grounds that the complaint failed to allege sufficient harm to the public.
- Moët Hennessy Acquires Joseph Phelps VineyardsLed the intellectual property due diligence for Moët Hennessy, in its acquisition of Joseph Phelps Vineyards, a nearly five-decade-old producer of fine wines from Napa Valley and, more recently, the Sonoma Coast.
- LVMH Luxury Ventures Investment in Aimé Leon DoreLed the intellectual property due diligence for LVMH Luxury Ventures, in its equity investment in Aimé Leon Dore, a New York-based streetwear brand with a cult following.
- ID Image Sensing LLC v. OmniVision Technologies, Inc.Represented OmniVision Technologies, Inc. in a complete win against Acacia Research Group subsidiary including final judgment of non-infringement with no payments made to the plaintiff.
- Worldwide Trademark Portfolio ManagementServe as IP counsel managing the worldwide trademark portfolio of a multi-national jewelry retailer containing over 3,000 marks globally.
- Miller Coors Beverage Co. USA, LLC v. Anheuser-Busch Companies, LLCRepresented Anheuser-Busch in obtaining a reversal of a preliminary injunction in a high-profile competitor false advertising dispute arising out of the 2019 Super Bowl. Law360 named the appellate court’s decision the #3 most significant Lanham Act decision of midyear 2020.
- Revolving Credit Facility Due DiligenceLed the IP due diligence for a bank in connection with closing a novel $30 million syndicated revolving line of credit to a broker-dealer for daily exchange related margin requirements now required by FINRA.
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- eventUniversity of San Diego Law School IP Speaker Series “The Cult of Celebrity: Right of Publicity and False Endorsement