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Intellectual Property

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

The right to control the commercial use of one’s identity, also known as the “right of publicity,” is an increasingly important area of intellectual property law as sponsorships and endorsements have become commonplace in advertising and as damages in right of publicity cases have risen substantially. Our Group has represented many famous brands in their collaborations with famous individuals and groups whose name, likeness, or image are an important asset. We also counsel lesser known clients regarding their recourse against others that misappropriate their personas for commercial use and rights of privacy issues such as intrusion, false light, and truthful publication of private facts. We believe that policing of proper use of one’s identity is essential for successful enforcement of a client’s rights of publicity and privacy.

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.

Patents

We represent clients in utility and design patent matters related to litigation, counseling, and due diligence. Our litigation experience includes competitor litigation, as well as non-practicing entity defense. Our practice includes federal court and United States Patent and Trademark Office litigation. We have handled matters involving numerous technologies, including semiconductors, hearing instruments, x-ray devices, plastics, online gaming, software, biology, and mechanical devices. Our design patent experience has been applied to a range of products, including luxury goods, beauty products, and medical devices.

We also provide guidance to companies developing their patent portfolios and conduct competitive intelligence. Our group also evaluates complex technologies for investment due diligence and drafts contracts related to joint development agreements and acquisitions involving patent rights.

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

DeBoulle Diamond & Jewelry Inc. v. De Beers Diamond Jewellers, Ltd.
DeBoulle Diamond & Jewelry Inc. v. De Beers Diamond Jewellers, Ltd. Defended De Beers Diamond Jewellers Ltd. in a trademark infringement action.
GoSmile, Inc. v. CVS Caremark Corporation
GoSmile, Inc. v. CVS Caremark Corporation. Represented GoSmile, Inc. in a trademark and trade dress infringement action.
Hertzberg Ernst & Sons v. Louis Vuitton Malletier S.A.
Hertzberg Ernst & Sons v. Louis Vuitton Malletier S.A. Represented Louis Vuitton in a trademark infringement action; we obtained a consent injunction and the plaintiff’s agreement to pay the legal fees our client incurred in the action.
Louis Vuitton Malletier S.A. v. Dooney & Bourke, Inc.
Louis Vuitton Malletier S.A. v. Dooney Bourke. Represented Louis Vuitton Malletier in a 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.
Louis Vuitton Malletier, S.A. v. Hyundai Motor America. Represented Louis Vuitton in a trademark infringement and dilution action; we obtained summary judgment in Louis Vuitton’s favor on its federal dilution claim.
T 7 Group, LLC v. Sutton Civil Action
T 7 Group, LLC v. Sutton Civil Action. Represented T 7 Group, a local streetwear company in a trademark infringement action. We obtained an award of our client’s damages and injunctive relief, rejecting the defendant's federal trademark application and transferring the defendant’s infringing domain name to our client.
Zodiac Spirits, Inc. v. Moët Hennessy U.S.A.
Zodiac Spirits, Inc. v. Moët Hennessy U.S.A. Defended Moët Hennessy in a trademark infringement action.
LVMH Acquires Majority Stake in Off-White
Representation of LVMH Moët Hennessy in its acquisitions of a majority stake in Off-White LLC, the trademark owner of Virgil Abloh's Off-White brand. LVMH and Virgil Abloh came to an agreement that will give the designer leeway to launch brands and seal partnerships across the full range of the luxury conglomerate's activities, beyond just the fashion division.
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: 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.

Trade Secret Litigation

Cintas Corp. v. America West Airlines, Inc.
Cintas Corp. v. America West Airlines, Inc. Defended America West Airlines in a case alleging misappropriation of trade secrets.
DF Institute, LLC d/b/a Kaplan Professional v. Dalton Education, LLC et al
DF Institute, LLC d/b/a Kaplan Professional v. Dalton Education, LLC et al. Litigated claims under the Defend Trade Secrets Act involving former employees recruited to join a directly competing company.

Brand Amabassador Agreements

Ariana Grande Unveiled as New Face of Givenchy
Representation of Givenchy – a Louis Vuitton Moët Hennessy luxury brand known for its haute couture clothing, accessories, and perfume – in the negotiation of a relationship deal with prominent actress and singer Ariana Grande as the new face of Givenchy. Ariana will be featured in Givenchy’s Fall-Winter 2019 campaign, to be unveiled in July (Announced: May 2019).

Copyright Infringement Litigation

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.

False Advertising Litigation

Miller Coors Beverage Co. USA, LLC v. Anheuser-Busch Companies, LLC
Miller Coors Beverage Co. USA, LLC v. Anheuser-Busch Companies, LLC. Member of the defense team who obtained 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.

Trademark Dilution Litigation

Louis Vuitton Malletier S.A. v. Hyundai Motor Co.
Louis Vuitton Malletier, S.A. v. Hyundai Motor America. Represented Louis Vuitton in a trademark infringement and dilution action; we obtained summary judgment in Louis Vuitton’s favor on its federal dilution claim.