Intellectual property may well be one of your most valuable assets, and M&R’s Intellectual Property Practice Group stands ready to protect it in a myriad of ways.
We advise on the validity of patents, trademarks and copyrights. The firm handles associated opinion-work concerning e-commerce, business and finance systems and computer software, hardware and networking, among many other things. Likewise, M&R represents companies – those in the advertising and digital media, consumer products, entertainment, financial services, health care, hospitality, insurance, retail and apparel sectors – relative to brand identity and rights protection matters. In addition, we litigate IP infringement matters in federal courts as well as the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB), and skillfully prosecute trademarks before the U.S. Patent and Trademark Office.
Without question, when it comes to all things IP related, M&R and our IP specialists are second to none.
Areas Of Expertise
- IP Counseling & Licensing
The firm conducts due diligence reviews of IP portfolios, advises on the IP aspects of corporate transactions, counsels companies on licensing strategies and drafts and negotiates licensing agreements.
- IP Litigation
Our attorneys have an impressive record of successfully litigating IP infringement cases through trial.
- Service Agreements
M&R negotiates, structures and drafts service agreements that cover licensing, ownership, assignment and non-disclosure rights.
- Software Development Agreements
We negotiate and draft complex software development agreements and defend clients against related litigation.
- State & Federal Investigations
The firm counsels clients on how best to manage state or federal investigations that concern IP and works to resolve related matters before they develop into formal enforcement actions.
- Trade Secrets
M&R helps clients protect their trade secrets and confidential information. In this regard, our litigators are amongst the most aggressive and successful in the business. In fact, the firm obtained one of the largest jury verdicts in U.S. history in connection with the misappropriation of computer trade secrets.
- Trademark Prosecution
We readily prosecute trademarks before the U.S. Patent and Trademark Office.
Amended Mark: Successfully petitioned on behalf of a prominent heavy metal guitarist to correct the record and have the registration of his mark for coffee beans reissued after his original application was found to include a misspelling of the mark.
Copyright & Trademark Prosecution: Handled all stages of trademark and copyright prosecution in the U.S. Patent and Trademark Office and U.S. Copyright Office, including opposition and cancellation practice before the Trademark Trial and Appeal Board.
Counterfeiting: Secured nationwide temporary restraining order and permanent injunction against counterfeiters on behalf of a major recording artist. Thereafter, participated in seizure of counterfeit goods.
Distribution Agreement: Drafted and negotiated 13-episode home video distribution agreement for startup digital animation content provider.
Domain Name Dispute: Successfully challenged the improper registration of an Internet domain name by a competitor of our client, a world-renowned science and education museum. Also, by way of a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding, forced the transfer of the domain name.
Financing: Represented a privately held, New York-based medical device company from its inception through several rounds of financing. The company boasts proprietary technology that provides a secure cloud-based solution for reliable reviewing, reporting, archiving, managing and distribution of ultrasound and other forms of medical imaging.
Illegal Bootlegging: Represented a major hard rock band that was negotiating a repackage release of recordings in Europe, but encountered problems when the distributor identified unauthorized bootleg concert DVDs available on Amazon’s German website. Facilitated the removal of the infringing products from the website, allowing the client to move forward with the planned release, all the while enjoying reduced fallout from unauthorized third-party product sales.
Licensing Agreements: Negotiated and drafted a cross-license and field-of-use agreement between two major specialty chemical corporations for patent portfolios relating to anti-reflective and top-coat immersion compositions.
Misappropriation of Trade Secrets: Represented a young entrepreneur after his “life’s work” was stolen by a large corporation, which claimed the work as its own. After a four-year legal battle against some of the largest national law firms, obtained a multi-million dollar verdict on behalf of our client, an award that remains one of the largest in the U.S. for the misappropriation of computer trade secrets.
Patent Prosecution – International: Successfully defended an electronics manufacturer before the World Intellectual Property Organization (WIPO) in the prosecution of its patent portfolio of software algorithms and processes for the identification of products displayed in media programs.
Rebranding: Managed all intellectual property-related aspects of corporate-wide rebranding effort for large entertainment company client.
Technology Transaction – Business Acquisition: Negotiated on behalf of a major private investment firm and drafted the intellectual property and services clauses in contracts associated with its $2 billion equity and asset purchase of a telecommunications company’s business and manufacturing facilities.
Technology Transaction – Merger Agreement: Negotiated and drafted the intellectual property clauses included in a merger agreement governing a global technology provider’s $35 million acquisition of the retail commerce arm of a leading next generation mobile solutions provider.
Trade Secret Litigation: Represented a social gaming company in litigation against a large competitor that involved allegations of misappropriation of trade secrets and employee raiding.
Trademark Infringement: Obtained favorable settlements and consent decrees on behalf of NFL Properties, LLP and a local NFL franchise in connection with multiple trademark infringement and false designation of origin cases filed against defendants in connection with their unlicensed use of trademarks and sale of NFL merchandise.
Trademark Infringement/Sanctions Award: Obtained a massive $250,000 sanctions order for the failure of a defendant and its attorney in a trademark infringement case to participate in discovery. A Judge in the United States District Court issued his staggering ruling after the defendant neglected to respond to our client’s discovery requests and then refused to abide by the Court’s order to provide responses to interrogatories and produce documents, which was requested by way of our comprehensive motion to compel.
Trademark, Copyright: Managed all trademark and copyright issues for renowned digital film studio.
- May 1, 2017
- April 17, 2017
- April 11, 2016
- Michelman & Robinson Expands its Corporate and IP Practice Groups with the Addition of Partner in Los AngelesFebruary 2, 2014
- April 18, 2012
- August 10, 2010
- May 4, 2017
- August 9, 2016
- April 22, 2016
- April 14, 2016
- April 13, 2016
- April 13, 2016
- March 29, 2016
- May 14, 2015
- February 9, 2015
- September 24, 2014
- May 8, 2014
- May 7, 2014
- IPFrontline, September 5, 2016
- IPWatchdog, September 2, 2016
- Digital Music News, August 29, 2016
- IPFrontline, August 19, 2016
- Golden Gate Restaurant Association Blog, August 8, 2016
- American Agent & Broker, October 1, 2013
- IIABCal Independent Insider, May 10, 2013
- Law360, August 31, 2010
- Developments in Trademark LawSan Diego Journal of Contemporary Legal Issues, Volume 19
- Patent Court Clarifies Interpretation of Patent Claim ConstructionIntellectual Property Developments, Spring 2006
- Paul McCartney Sues Sony/ATV to Reclaim Copyrights to Beatles Songs January 27, 2017
- FACING THE MUSIC: Hoteliers Run the Risk of Copyright Infringement August 2, 2016
- A Different Route: Challenging Orange Book Patents Via Inter Partes Review July 18, 2016
- Courts and Patent Litigants Continue to Wrestle With Scope of Supreme Court’s Alice Test July 11, 2016
- Julia Child Foundation Sues Airbnb for Using Her Name Without Permission June 27, 2016
- German High Court Copyright Decision Indicates Potential Limits on Sample Clearance Requirements June 1, 2016
- New Federal Trade Secret Law: Key Takeaways for Employers May 12, 2016
- UPDATE: The Priceline Negotiator Fails: BOOKING.COM Is Rejected As A Trademark April 22, 2016
- Omni Accuses Vacation Rental Site of Trademark Infringement March 28, 2016
- Juvenile Products Manufacturing Association (JPMA) Baby ShowWashington, D.C., March 22, 2018
- Mondo NYC 2017New York, NY, October 6, 2017
- Juvenile Products Manufacturing Association (JPMA) Baby ShowAnaheim, CA, May 12, 2017
- Mondo.NYC Music, Technology and Innovation ConferenceNew York, New York, September 16, 2016
- Silicon Beach FestMarina del Rey, CA, August 26, 2016
- San Francisco Entertainment CommissionSan Francisco, CA, August 16, 2016
- AAHOA WebinarSan Francisco, CA, June 29, 2016
- The IP Strategy Summit: Orange CountyCosta Mesa, CA, June 1, 2016
- Independent Insurance Agents & Brokers of California (IIABCal) Blue Ribbon ConferenceBig Island, HI, May 3, 2016
- 2016 InnSpire Conference & Trade ShowMonterey, CA, February 2, 2016
- Del Shaw Moonves Tanaka Finkelstein & LezcanoSanta Monica, CA, July 22, 2014
- American Bar Association (ABA) Entertainment & Sports Forum Annual Meeting2012