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Intellectual Property
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Leveraging Michelman & Robinson, LLP’s (M&R’s) Intellectual Property Department with the vast litigation experience of our other attorneys has proven invaluable in representing our clients’ patent, trademark and copyright issues before federal and state courts, as well as before the Patent Trial and Appeal Board (PTAB), Trademark Trial and Appeal Board (TTAB) and the United States International Trade Commission (USITC). We have obtained numerous multi-million dollar verdicts on behalf of our clients, representing them in disputes involving false advertising, unfair competition, computer fraud and abuse, and trade secrets. 

We counsel on the validity and infringement of patents, trademarks and copyrights. We also represent companies in opinion-work relating to e-commerce; business and finance systems; computer software, hardware and networking; digital/analog data transmission, reception and processing circuits; electrical power supply and semiconductor circuits; wire and wireless signal communication devices and networks; and electronic and electro-mechanical devices. Additionally, we represent clients in brand identity and rights protection matters across the entertainment, consumer products, health care, hospitality, insurance, apparel, wine and spirits, toys and automotive industries, among others. 

Our intellectual property attorneys draft and negotiate licenses and other intellectual property agreements to meet the various requirements of corporate transactions. We represent several of the top technology companies in the world, and have significant experience in the most complex and sophisticated transactions, routinely counseling clients who introduce new products and services to the market. Further, we have successfully resolved multimedia issues that have arisen from the convergence of the entertainment and advertising industries. Our attorneys regularly provide counsel on domestic and foreign trade laws, devising and implementing intellectual property strategies for venture capital investments and mergers and acquisitions. We also advise clients on proprietary information protection systems, copyright matters, and rights of publicity, as well as Internet-related branding issues, including domain names, acquisition strategies, administration issues and disputes.   

Our Intellectual Property attorneys are adept at prosecuting patents and trademarks before the U.S. Patent and Trademark Office, and are skilled in the cost-effective management of large and small domestic and international intellectual property asset portfolios. We have represented numerous companies in this capacity, from various industries, including electronics, manufacturing, telecommunications, e-commerce and financial services.

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Areas Of Expertise

The following is a selective sampling of our representative matters:

  • Amended Mark: The Office of the Director of the U.S. Patent and Trademark Office granted the relief sought in the post-registration petition filed by M&R on behalf of our client, a major heavy metal guitarist, in connection with the registration of his mark for coffee beans. The guitarist’s management had originally provided (and verified) instructions to file the application for a misspelling of the mark. After the application had been examined and allowed, the client realized the error. Subsequently, when the statement of use was filed along with an amendment of the mark, the Trademark Office erroneously ignored the amendment and processed the statement of use – based on a specimen displaying the as-amended mark – and granted registration for the misspelled mark. M&R filed the petition to correct the record and have the registration reissued, based on clear error by the Trademark Office. In its order, the Office of the Director acknowledged the Trademark Office’s fault and, finding the amendment would not comprise a material alteration of the applied-for mark, remanded the file for reissue of the registration for the proper, amended mark.
  • Copyright & Trademark Prosecution: Handled all stages of trademark and copyright prosecution for client 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 major recording artist; 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 DisputeSuccessfully represented a world-renowned science and education museum in Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding to oppose improper registration of an Internet domain name by a competitor, forcing transfer of that domain name to client.
  • False Advertising: Successfully defended Thrive Records LLC against claims of false advertising, false designation of origin and deceptive trade practices alleged by Payday Records, Inc. Payday and Ultra Records, Inc. brought the suit under federal and New York state laws, disputing Thrive's longstanding practice of identifying recording artists and remixers whose work is included on cover packaging of dance music compilation albums.
  • Financing: Represented a privately-held, New York-based medical device company from its inception through several rounds of financing. The client has 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: M&R client, a major hard rock act, was negotiating with distributor for a repackage release in Europe, but encountered problems when the distributor cited seven unauthorized third-party bootleg concert DVDs on Amazon’s German website. Client’s entertainment counsel attempted via the Amazon “take-down” procedures to have the infringing product removed but was unsuccessful, so they engaged M&R. M&R wrote a strong demand letter and followed it up with email correspondence. Amazon took down the product. Further, many of the sellers provided contact information for the distributors from whom they sourced the infringing product. The resulting total victory (within less than a week) ensures the client can move forward with the planned new release, while enjoying reduced fallout from unauthorized third-party product sales.
  • Licensing Agreements: Drafted and negotiated a cross-license and field-of-use agreement between two major specialty chemical corporations for the patent portfolios relating to anti-reflective and top-coat immersion compositions.
  • Misappropriation of Trade Secrets: Obtained a multi-million dollar jury verdict on behalf of our client that remains one of the largest in U. S. history for the misappropriation of computer trade secrets.
  • Patent Prosecution – International: 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.
  • Permanent Injunction Counterfeiters: Secured nationwide temporary restraining order and permanent injunction against counterfeiters on behalf of major recording artist; participated in seizure of counterfeit goods.
  • Rebranding: Managed end-to-end IP aspects of corporate-wide rebranding effort for large entertainment company client.
  • Technology Transaction – Business Acquisition: Drafted and negotiated the intellectual property and services clauses for a major private investment company in a $2 billion equity and asset purchase of a telecommunications company’s business and manufacturing facilities.
  • Technology Transaction – Merger Agreement: Drafted and negotiated the intellectual property clauses of a $35 million merger agreement by which a global technology provider acquired the retail commerce solutions of a leading next generation mobile solutions provider.
  • Trade Secret Litigation: Successfully represented a major social gaming company in litigation against a large competitor, alleging claims of trade secret misappropriation and employee raiding.
  • Trademark Dispute: The Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office granted a petition by a major movie studio to cancel registration for a mark in the name of another party. During the subsequent four years, M&R filed the petition on behalf of the studio. The registrant failed to present any evidence or arguments in support of the validity of her registration, while we collected evidence that registrant had never used the mark, relying on false specimen to obtain registration. Registrant’s arguments were rejected, and her procedurally impossible plea to amend her registration to an “intent to use” basis failed, resulting in a total win for M&R’s client.
  • Trademark Infringement: Represented the National Football League Properties, LLP and a local National Football League franchise in multiple trademark infringement and false designation of origin matters against defendants in connection with their unlicensed use of trademarks and sale of merchandise. Through the rapid initiation and prosecution of legal proceedings, clients achieved favorable monetary settlements and consent decrees prohibiting similar future conduct by defendants. 
  • Trademark, Copyright: Managed all employment and confidentiality agreements and trademark and copyright issues for digital film studio.

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