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Intellectual Property

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Overview

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 & 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 these 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.

Internet

We recognize that the legal issues relating to the Internet – including domain name protection, e-commerce, social media, and the hidden use of trademarks 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.

Mergers & Acquisitions

Mergers and acquisitions are among the focal areas of our practice. The Firm is regularly called upon to assist our regular private and publicly-held clients, as well as clients who retain us to act as special counsel on transactions requiring highly specific knowledge and experience, with stock and asset acquisitions, mergers, spin-offs, divestitures, joint ventures, and other strategic transactions. Our mergers and acquisitions experience is unusually diverse and unique. Over the past several years, we have represented domestic and foreign buyers, sellers, and financial intermediaries in diverse transactions involving clients in many different industries including financial institutions, luxury goods, retailing, manufacturing, motor vehicle, wine and spirits, energy, and high technology.

Endorsements

When clients seek to elevate their brands or products through celebrity endorsements, brand ambassadors, social media influencers, and other media outlets, they call on Barack Ferrazzano. With more than 30 years of experience representing clients in a wide range of industries, our IP attorneys are well-versed in advising our clients in all aspects of this avenue of promotion – from identifying the benefits and risks to their assets, to developing crisis communication strategies with public relations firms. We regularly negotiate endorsement deals with celebrities and talent managers, and we have first-hand knowledge of the current industry standards.

Design Patents

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

Advertising Review & Regulatory Compliance

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. Should claims arise, our seasoned litigators are adept at handling a wide array of claims, including false advertising, copyright infringement, trademark infringement, and claims under the California Consumers Legal Remedies Act.

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.

Copyright

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

  • Copyright prosecution;
  • How to develop and protect ownership of copyrighted works;
  • Minimizing the risk of infringement claims;
  • Drafting license and assignment agreements;
  • Complex transactions; and
  • Litigating copyright infringement lawsuits.

Software

Our IP 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 assignments 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.

    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 highly skilled paralegals and a state-of-the-art intellectual property asset management database system.

    Experience

    Trademark Infringement Litigation

    Trade Secret Litigation

    Brand Amabassador Agreements

    Copyright Infringement Litigation

    False Advertising Litigation

    Trademark Dilution Litigation

    Intellectual Property Acquisition & Counseling

    Trademark Counterfeiting Litigation

    Federal Trademark Prosecution

    Trademark Trial and Appeal Board Appeals, Oppositions, and Cancellations

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